IP Study Guide

Which of the following is not protected by copyright? (A) literary works (B) musical works (C) ideas (D) architectural works

(C) is correct. Section 102(b) of the Copyright Act expressly precludes copyright protection for ideas, stating: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. §102(b).

A work is "fixed in a tangible medium of expression" for copyright law purposes when it is: (A) handwritten on paper, recorded on film, stored on a hard drive, or even stored in a computer's random access memory (RAM—i.e., memory that would be lost if the computer lost power) (B) handwritten on paper, recorded on film, stored on a hard drive, but not when stored on a computer's random access memory (RAM—i.e., memory that would be lost if the computer lost power) (C) recorded on film, stored on a hard drive, or even stored on a computer's random access memory (RAM—i.e., memory that would be lost if the computer lost power), but not merely handwritten on paper (D) recorded on film or stored on a hard drive, but not when it is merely on a computer's random access memory (RAM—i.e., memory that would be lost if the computer lost power) or handwritten on paper

103. Answer (A) is correct. Section 101 of the Copyright Act states that a work is "fixed in a tangible medium of expression" for copyright law purposes when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission.

What form of patent protection is potentially available for a feature of a product that is primarily functional but is also ornamental, or pleasing to the eye? (A) a utility patent only (B) a design patent only (C) both a design patent and a utility patent (D) neither a design patent nor a utility patent

Answer (A) is correct. A feature of a product that is primarily functional, but is also ornamental and aesthetically pleasing, can potentially be protected under utility patent law, which protects [126/127] useful inventions. The fact that the functional feature also happens to be aesthetically pleasing or original will not disqualify it from being protected by a utility patent. Section 101 of the Patent Act states: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." This provision grants utility patent protection to three types of inventions: (1) products (i.e., a machine, manufacture, or composition of matter); (2) processes (such as a new chemical manufacturing process); and (3) improvements on existing products or processes. The fact that a useful feature is also attractive will not disqualify it from protection as an "invention" under the Patent Act, so long as all of the requirements are met. Historical examples of utility patents include the Wright Brothers' airplane, Alexander Graham Bell's telephone, and Thomas Edison's light bulb.

The following are, with the proper facts, valid defenses to a claim of patent infringement for making, using, or selling a patented device: (A) invalidity of the patent (B) lack of knowledge of the patent (C) expiration of the statute of limitations (D) all of the above

Answer (A) is correct. Although a patent is presumed to be valid, see 35 U.S.C. §282(a), invalidity is a defense provided in section 282(b)(2)-(3) of the Patent Act.

Which of the following statements most accurately describes appellate jurisdiction in patent cases under current law? (A) Appeals go to the Federal Circuit, with certiorari review (discretionary) by the Supreme Court. (B) Appeals go to the Federal Circuit, with no Supreme Court review possible (the Federal Circuit has the final say). (C) Appeals go to the regional court of appeals (for example, the Fifth Circuit for cases filed in Louisiana), with certiorari review (discretionary) by the Supreme Court. (D) Appeals go to the regional court of appeals (for example, the Fifth Circuit for cases filed in Louisiana), with en banc review (discretionary) by the Federal Circuit.

Answer (A) is correct. Appellate jurisdiction in patent cases is within the exclusive purview of the United States Court of Appeals for the Federal Circuit, with certiorari review (discretionary) by the Supreme Court.

Green Co. is about to enter a bid for a construction project. The bidding is done by secret bid, with the contract going to the lowest bidder. If an employee of Green Co. "leaks" information about the amount of Green Co.'s bid to a competitor, who then undercuts Green Co. [24/25] and gets the contract, does Green Co. have any civil legal remedy in most states or under federal law? (A) Probably yes, against both the employee and the competitor, because the bid is protected as a trade secret as providing an actual or potential advantage. (B) Probably yes, but only against the employee, because the bid is protected as a trade secret; the competitor, however, can freely make use of this information. (C) Probably no, because the bid is not protected as a trade secret; it violates the rule that "one time" pieces of information do not qualify as trade secrets. (D) Almost definitely no, because the bid is almost certainly not protected as a trade secret, because trade secret information is almost always a formula or other technical information.

Answer (A) is correct. Green Co. probably has a legal remedy against both the employee and the competitor, because the bid is protected as a trade secret, as providing an actual or potential advantage, under the Uniform Trade Secrets Act ("UTSA") as well as federal law (commonly called the DTSA, for the Defend Trade Secrets Act of 2016). The employee is liable for divulging the trade secret (which is at least implicitly confidential), and the competitor is liable because it knew or should have known that it was receiving trade secret information. Even though the bid is a one-time [116/117] piece of information, it is protected under the UTSA and the DTSA as long as it provides a business advantage

Which of the following statements most accurately describes Congress's ability to grant perpetual patents, or allow unlimited patent renewals, if it desires to do so? (A) The Intellectual Property Clause (Art. I, sec. 8, cl. 8) expressly precludes such a law. (B) The Intellectual Property Clause (Art. I, sec. 8, cl. 8) expressly precludes such a law, but Congress could easily avoid the problem by relying upon the Commerce Clause. (C) The Intellectual Property Clause (Art. I, sec. 8, cl. 8) expressly precludes such a law, yet, while the law is unclear, it is likely that the Commerce Clause would give Congress the power to circumvent the express limits of the Intellectual Property Clause. (D) Congress has already allowed for perpetual patents in the form of unlimited patent renewals in the utility patent field.

Answer (A) is correct. If Congress attempted to grant a perpetual patent, this action would be directly contrary to the clearly expressed "limited times" language of the Intellectual Property [139/140] Clause (Art. I, sec. 8, cl. 8) of the Constitution, which states: "The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

In patent cases, injunctive relief is: (A) available upon a showing of a four-factor equitable test (B) presumptively available to prevailing patent plaintiffs (C) automatically available to prevailing patent plaintiffs (D) only available in cases of bad faith on the part of the defendant (i.e., only in exceptional cases)

Answer (A) is correct. In patent cases, injunctive relief is available upon a showing of a four-factor equitable test. This conclusion reflects recent Supreme Court guidance on the issue. In eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393-94 (2006), the Supreme Court held that a patent holder must make a four-part showing in order to receive injunctive relief: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

What would be the basic term of protection for a utility patent that issued on an application filed today? (A) 20 years from the date of patent filing (B) 14 years from the date of patent issuance (C) 15 years from the date of patent issuance (D) 17 years from the date of patent issuance

Answer (A) is correct. Section 154(a)(2) of the Patent Act provides that the basic term of protection for a utility patent (or a plant patent) under present law is 20 years from the date of patent filing (not counting any extensions of the patent term allowed by law).

What is the duration for rights under the Visual Artists Rights Act ("VARA") for a sculpture created in 1995? (A) life of the author (B) life of the author plus 50 years [49/50] (C) life of the author plus 70 years (D) the rights are perpetual

Answer (A) is correct. The duration for rights under VARA for post-VARA works is the life of the author. See 17 U.S.C. §106A(d)(1) ("With respect to works of visual art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author."). Thus, the VARA moral rights of post-VARA authors are not given the same term as the economic rights under section 106—life plus 70 years. Interestingly, and likely unintentionally, the VARA moral rights for a pre-VARA work sold by an author after June 1, 1991 extend for the entire copyright term of the work.

The source of Congress's authority to enact the Lanham Act (trademark law) and provide for federal trademark rights is: (A) the Commerce Clause (B) the Intellectual Property Clause (C) the Necessary and Proper Clause (D) the First Amendment

Answer (A) is correct. The source of Congress's authority to enact the Lanham Act (trademark law) is the Commerce Clause, which gives Congress the power to regulate interstate and foreign commerce. The Intellectual Property Clause (Art. I, sec. 8, cl. 8) provides authority for the enactment of patents and copyrights for limited times but does not provide for protection of trademarks. Answer (B) is incorrect. As noted above, the Intellectual Property Clause provides authority for the enactment of patents and copyrights but does not provide for protection of trademarks. Answer (C) is incorrect. The Necessary and Proper Clause does not independently support Congress's authority to enact trademark law. Answer (D) is incorrect. The First Amendment is a limitation on the scope of Congress's power, not a grant of authority to it.

The letters "NSF," in all capital letters and placed within a circle (where the letters originally stood for National Sanitation Foundation but now are simply used as part of the entity name "NSF International"), can be found on a variety of products, including manufacturing equipment, ingredients, and the like. The "NSF-in-a-circle" mark is used to distinguish a product that has been tested by and determined to meet the standards of NSF International, an independent product testing and inspection organization. Given these facts, categorize this "NSF" mark under the Lanham Act. It is a: (A) certification mark (B) collective mark (C) service mark (D) trademark

Answer (A) is correct. The trademark term "NSF" used in a circle (by NSF International) is a certification mark. The Lanham Act defines a certification mark as a mark "used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services." 15 U.S.C. §1127. Here, the "NSF" mark serves to certify to purchasers that the products sold by third parties (i.e., not sold directly by NSF International) meet certain safety, quality, sustainability, or performance standards set by NSF.

Garden hoses used for watering are made of several layers of different materials, including an outer layer that is tough enough for durability but thin enough for flexibility. A manufacturer of garden hoses spent about 10 months developing an innovative manufacturing technique for bonding the layers of various materials together. The new technique was faster than prior methods, and the manufacturer decided to keep it a secret, which it determined was realistic since the gardening supply business is not rife with economic espionage. The garden hose it made sold very well, particularly at large "big box" home supply stores. Unfortunately, an employee's departure about two years later disrupted the product's success. Just four months after the employee resigned, a competitor began selling a slightly less expensive garden hose that the original manufacturer suspected was produced using its "new" technique; the manufacturer also noticed that its sales at "big box" stores, where the products directly competed, began to slow down shortly thereafter. The manufacturer sued the competitor for misappropriation of its trade secret. Given these facts, if the plaintiff manufacturer succeeds in proving misappropriation of its trade secret by the competitor, what remedies should be available to it under the UTSA or DTSA? (A) An injunction barring further use of this manufacturing information for at least six months because defendant obtained a head start on developing the technique of at least that long, and monetary damages for the lost sales during the head-start period because the defendant also caused lost sales that are compensable. (B) An injunction barring further use of this manufacturing information for at least six months because the defendant obtained a head start on developing the technique of at least that long, but no monetary damages for the lost sales because any diminished sales are not compensable. (C) No injunction barring further use of this manufacturing information because secrecy of the information cannot be reestablished after it is lost, but monetary damages for the lost sales during the head-start period of at least six months because the defendant caused lost sales that are compensable. (D) A strict injunction against similar behavior in the future, but no injunction barring use of this information because secrecy of the information cannot be reestablished after it is lost, and no monetary damages because any diminished sales are not compensable.

Answer (A) is correct. This answer correctly states that an injunction can be used to remedy a head start that a competitor gains by not using a lawful means of ascertaining information, such as independent development or reverse engineering, and by instead using either improper means or breach of confidence for gaining trade secret information. Here, there was a head start, and an injunction should issue to delay the competitor for at least that long. See UTSA §2; 18 U.S.C. 1836(b)(3)(A); Lamb-Weston, Inc. v. McCain Foods, Ltd., 941 F.2d 970 (9th Cir. 1991) (affirming [119/120] an 8-month injunction that a district court had issued to remedy a "head start" gained by misappropriation). The answer also correctly states that damages for lost sales are compensable under the UTSA or the DTSA with proof that the loss was caused by the misappropriation. See UTSA §3; 18 U.S.C. §1836(b)(3)(B)(i)(I).

A famous celebrity meets a friend for a casual lunch. Unbeknownst to the celebrity, the "friend" has surreptitiously audio-taped the conversation (the celebrity did most of the talking). What claim or claims can the celebrity bring to prevent publication of the conversation in the tabloids? (A) state law copyright only (B) federal copyright only (C) both federal and state law copyright claims (D) neither federal nor state law copyright claims

Answer (A) is correct. This scenario presents a rare example of material that might arguably be protected under state copyright law. A famous celebrity meets a friend for a casual lunch. Unbeknownst to the celebrity, the "friend" has surreptitiously audio-taped the conversation (the celebrity did most of the talking). See Estate of Hemingway v. Random House, Inc., 244 N.E.2d 250, 254 (N.Y. 1968) (state law claim involving similar facts). The key to the lack of federal protection here is understanding who the "author" is—the celebrity, for the celebrity's comments—and how that affects the definition of "fixed" and the extent of federal protection under section 102(a). "A work is 'fixed in a tangible medium of expression' when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." 17 U.S.C. §101 (emphasis added). Copyright preemption under section 301 of the Copyright Act does not preclude the state copyright law claim, as that claim does not involve "fixed" material: On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

How long does trade secret protection last? (A) indefinitely, as long as the requisite secrecy and competitive advantage exist (B) perpetually, regardless of whether the information remains secret (C) for 20 years from the date of first use D) for as long as it takes any one competitor to reverse engineer the subject matter of the trade secret

Answer (A) is correct. Trade secret protection can extend indefinitely, as long as the requisite secrecy and competitive advantage exist. A classic example of a trade secret that has been maintained for many years is the formula for Coca-Cola.

NBC, or the National Broadcasting Company, is a television network currently owned and broadcast by a subsidiary of Comcast. NBC primarily offers news and entertainment services in connection with the NBC name and logo, which is a stylized peacock in several colors. NBC also sells, however, a limited range of products bearing the marks in a few retail locations, such as the t-shirts, caps, and magnets it sells at stores near its facility in Rockefeller Center in New York and at the Universal Studios theme parks. Hundreds of products bearing the marks are given away daily to persons in the studio audience of certain shows, and to those waiting outside of other studios, such as the "Today Show" studio in New York. Which of the following most accurately describes NBC's position with respect to obtaining registered protection for its NBC name and logo mark? (A) NBC can seek trademark protection for the mark as used on the goods it sells, as well as service mark protection for the mark as used in connection with its news and entertainment business. (B) NBC can seek certification mark protection for the mark as used on the goods it sells, as well as service mark protection for the mark as used in connection with its news and entertainment business. (C) NBC can obtain either trademark protection for the mark as used on the goods or service mark protection for the mark as used in connection with its news and entertainment business, but it must elect between the two forms of protection. (D) NBC can obtain service mark protection for the mark as used in connection with its news and entertainment business, but it cannot obtain trademark protection for the mark as used on the goods because they are merely promotional.

Answer (A) is correct. Under these facts, the owner offers both services and goods in connection with the same mark. Accordingly, the owner, NBC, can obtain trademark protection for the mark as used on the specified goods, as well as service mark protection for the mark as used in connection with the specified services. The company is offering bona fide products for sale in commerce, as well as services. There is no prohibition on obtaining both types of registrations for marks used both in goods markets and service markets. This scenario can be distinguished from that found in In re Dr. Pepper Co., 836 F.2d 508 (Fed. Cir. 1987), in which the Federal Circuit held that trademark owners who use a mark for purely promotional purposes are ineligible for service mark protection for that mark because they have not made a bona fide use of the mark to sell a service. Answer (B) is incorrect. Neither the trademark nor the service mark qualifies as a "certification mark," a term that is discussed below in the answer to Question 4. Answer (C) is incorrect. As noted above, there is no prohibition on obtaining both types of registrations for marks used to make bona fide sales in both goods markets and service markets. Answer (D) is incorrect. The facts indicate that the mark is used to sell goods; the mark is not only placed on goods for promotional purposes. Even though some goods are given away (and are thus promotional in nature), on these facts, other goods are being sold for profit-making purposes.

A plant researcher working to enhance yields of wheat crops without dependence on chemical fertilizer, has developed a new, higher-yield wheat by genetically modifying the plant. Wheat is a plant that sexually reproduces through seeds. This researcher's new plant is potentially eligible for protection through: (A) plant patent (B) utility patent (C) both (A) and (B) (D) neither (A) nor (B)

Answer (B) is correct. A genetically modified, sexually reproduced plant with utility, such as a higher-yield wheat, is eligible for protection through a traditional utility patent. This result may seem counterintuitive, particularly since there are also "plant patents" under section 161 of the Patent Act, but "plant patents" protect only asexually reproduced plants (other than edible tubers). The Supreme Court expressly resolved the question of whether utility patent protection can extend to plants—in light of the separate category of plant patents—in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001). The Court held that plants can qualify as patentable subject matter under section 101 of the Patent Act if they meet the ordinary requirements of novelty, nonobviousness, and usefulness. This holding confirmed the Patent Office's practice of granting utility patents on plants that satisfy the ordinary utility patent standard. Utility patent protection is only available if the plant characteristic is the product of human ingenuity—which would be the case if the higher-yield trait resulted from genetic modifications introduced by the human researcher. The concept of utility patent protection for genetically modified plants logically follows from the Supreme Court's biotechnology ruling in Diamond v. Chakrabarty. Just [127/128] as a genetically modified bacterium can receive utility patent protection, so too might a genetically modified strain of corn, soybeans, or wheat.

When is product configuration or product design trade dress protectable under federal law? Consider the required trade dress strength or level of distinctiveness and complete the following sentence. Product configuration or product design trade dress: (A) is always inherently distinctive and is protectable regardless of secondary meaning or acquired distinctiveness (B) is never inherently distinctive; it is protectable only upon a showing of secondary meaning or acquired distinctiveness (C) may be either non-inherently distinctive (and therefore protectable only upon a showing of secondary meaning or acquired distinctiveness) or inherently distinctive (protectable regardless of secondary meaning or acquired distinctiveness), depending on the circumstances, just like an ordinary word or design mark (D) is protected only when it is famous because it is only protectable under a dilution theory

Answer (B) is correct. A product configuration or product design trade dress is never inherently distinctive; it is protectable only upon a showing of secondary meaning. This statement of the law is based on the Supreme Court's holding in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000). The Court specifically held that a product design (in this instance, children's dress designs) cannot be inherently distinctive. Product designs can be protected (whether registered or unregistered) only upon a showing of secondary meaning (i.e., acquired distinctiveness). The Court distinguished Two Pesos v. Taco Cabana based on the differences between product design and packaging trade dress:

How is a trademark term that is a surname treated for distinctiveness and trademark protection purposes? Compare it to other marks on the spectrum of distinctiveness. For example, consider "Heinz" when used for ketchup or other condiment products. (A) Surnames are treated the same as generic terms, meaning they are never protected. (B) Surnames are treated the same as descriptive marks, meaning they require proof of acquired distinctiveness for protection. (C) Surnames are treated the same as arbitrary or suggestive marks, meaning they do not require proof of acquired distinctiveness for protection, but they might be reused by other persons in different contexts. (D) Surnames are treated the same as fanciful marks, meaning they do not require proof of acquired distinctiveness for protection, and it is highly unlikely that another person could reuse them in a different context.

Answer (B) is correct. A trademark term that is a surname (such as "Heinz," which is used for ketchup or other condiment products) is treated, for distinctiveness purposes, the same as a descriptive mark. See 15 U.S.C. §1052(e)-(f) (excluding from registration marks that are "merely descriptive" and those that are "primarily merely a surname," but allowing registration of either type of mark if it "has become distinctive of the applicant's goods in commerce").

Which of the following statements best characterizes the availability of copyright protection for the design of a utilitarian article, such as an attractive, original design for a picnic table and benches for use in public parks? (A) The design is protectable if the original, aesthetic features are physically separable from the utilitarian aspects of the picnic table and benches. (B) The design is protectable if the original, aesthetic features are either physically or conceptually separable from the utilitarian aspects of the picnic table and benches. (C) The design is protectable if the original, aesthetic features show a modicum of creativity and if the look and feel of the picnic table and benches is aesthetically pleasing as a whole. (D) The design is not protectable because the article is useful, and copyright law does not protect functional articles.

Answer (B) is correct. An original design for a picnic table and benches is protectable if the original, aesthetic features are either physically or conceptually separable from the utilitarian aspects of the picnic table and benches. The table and benches can be viewed as "useful articles" under the Copyright Act. See 17 U.S.C. §101 ("A 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."). A useful article can gain copyright protection as a "pictorial, graphic, or sculptural work" if, "and only to the extent that, [the design of the useful article] incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. §101 (definition of "pictorial, graphic, and sculptural works").

Company A begins using a trademark in Illinois, Indiana, and Wisconsin in 2016. Company B begins using the same trademark to sell the same product state-wide in Texas in 2018. Company A files to federally register its trademark rights in 2019 and receives its registration in 2020. Neither company is aware of the other until 2025. Which of the following statements most accurately describes the situation? (A) Company A obtains exclusive rights to the trademark nationwide, by virtue of its first use followed by federal registration. Company B has no continuing rights. (B) Company A obtains exclusive rights to the trademark in all states but Texas. Company B has exclusive rights in Texas. (C) Company A obtains exclusive rights to the trademark in all states but Texas; its rights in Texas are nonexclusive. Company B may elect to continue using the mark in Texas, but it must share or overlap there with Company A. (D) Company A obtains exclusive rights to the trademark only in Illinois, Indiana, and Wisconsin. Company B obtains exclusive rights in Texas. Company A's registration is invalidated by B's area of priority, making rights in other states available to the first of A or B to use the mark there.

Answer (B) is correct. Company A obtains all rights to the trademark nationwide, except that Company B has exclusive rights state-wide in Texas. These facts present an illustration of the limited-area exception under the Lanham Act. The critical facts in this case are that Company A was both first to use the mark and then file to federally register in 2019, at which point Company B had only state-wide operations in Texas, which it began in good faith without knowledge of A's mark. The Lanham Act gives Company A nationwide priority, except for geographic areas in which Company B already had ongoing operations at the time of the application for federal registration (as long as the application matures to a registration). Company B, therefore, enjoys the benefit of the limited-area exception, which allows it to continue doing business in the geographic areas where it had established goodwill—in this instance, the entire state of Texas. Company B is not permitted to expand its operations into other parts of the country and is effectively frozen into its [92/93] present locations. (If Company B had only been actively doing business in a smaller area, such as the San Antonio, Texas, metropolitan area, then it would be limited to that smaller area.)

A company purchases used tablet computers with broken or cracked touch screens, puts new screens into them, and sells them in mass quantities as used devices under the original brand names (e.g., Apple, Microsoft, Samsung, etc.). Which of the following statements captures the best advice to give to the company? (A) The tablets can be sold as used products under the original brand names with no additional markings, as this is a lawful repair of the products. (B) The tablets can be sold under the original brand names as long as they are clearly marked as reconditioned and assuming that replacing the screens is not considered unlawful reconstruction. (C) The tablets cannot be sold under the original brand names, because there is no label or marking that could be added to avoid likely consumer confusion. (D) The tablets cannot be sold under the original brand names, even with added labels, due to the doctrine of reverse confusion; consumers would be confused about approval of the repairs by the original source.

Answer (B) is correct. In this scenario, the company purchases products with a broken part, inserts a new part to replace the broken one, and leaves the brand name in place upon resale of the used items. In general, the products, here, tablet computers, can be sold under the original brand name as long as they are clearly marked as reconditioned and assuming that replacing the screen is not considered unlawful reconstruction. In the landmark case of Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), the Supreme Court held that repaired or reconditioned products can continue to be sold under the trademark of the original seller, as long as the following provisos are met: (1) the identity of the repairer must be clear; (2) the product must be clearly marked as repaired, used, or reconditioned; and (3) the repair must not be so extensive as to make any reference to the original manufacturer misleading (i.e., it cannot constitute a complete reconstruction [109/110] of the product). The Lanham Act provides no relief to the original manufacturer if these conditions are met.

Which of the following statements best describes the role of proof of actual confusion in trademark cases? (A) Actual confusion must be proven in order for the trademark owner to recover. (B) Actual confusion is not required, but if it is proven it is highly persuasive evidence of a likelihood of confusion and will carry great weight. (C) Actual confusion is easily shown and is given the same weight as other factors. (D) Actual confusion is one of the less important factors in a likelihood of confusion analysis since it is hard to prove.

Answer (B) is correct. Proof of actual confusion in trademark cases is not required, but if it is proven it is persuasive evidence of a likelihood of confusion. Actual confusion can be shown directly by proof that consumers were in fact confused as to the source or sponsorship of the goods or services, or indirectly through the use of survey evidence. Thus, if the trademark owner (the senior user) can bring forward this type of evidence, it is a persuasive indicator of the likelihood of confusion. On the other hand, the owner/senior user is not required to prove actual confusion, as the ultimate question is whether there is a likelihood of confusion among ordinary consumers.

The Music Modernization Act of 2018, which was recently signed into law by Congress, does which of the following things? (A) offers full public performance rights to sound recordings for the first time (B) streamlines the music licensing process to make it easier for rights holders to get paid when their music is streamed online and provides federal copyright protection for sound recordings made before 1972 (C) provides federal copyright protection for sound recordings made before 1972 and creates a "small claims court" for any alleged copyright violations involving small amounts of money (D) both (A) and (B) are correct

Answer (B) is correct. The Music Modernization Act ("MMA") streamlines the music licensing process to make it easier for rights holders to get paid when their music is streamed online and provides federal copyright protection for sound recordings made before 1972. Included in the MMA is the Compensating Legacy Artists for their Songs, Service, and Important Contributions to Society (CLASSICS) Act. This provision addressed the problem that sound recordings made prior to February 15, 1972 were not covered under federal copyright law, leaving it to the individual states to pass laws for recording protection. The CLASSICS Act established that pre-1972 sound recordings are covered by federal copyright law.

The U.S. government can own which of the following types of copyrights? (A) works of U.S. government employees acting in the scope of their duties (B) rights to works assigned to it by non-governmental authors (C) copyrighted works by government employees that relate to the subject of national secrets (D) both (B) and (C) above

Answer (B) is correct. The United States government can own rights to works assigned to it by non-governmental authors. Section 105 of the Copyright Act expressly precludes copyright protection for works of United States government employees acting in the scope of their duties, but allows the government to receive copyrights from others: "Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise." 17 U.S.C. §105. A "work of the United States Government" is defined as "a work prepared by an officer or employee of the United States Government as part of that person's official duties." 17 U.S.C. §101.

Maintaining nitrogen levels in the soil is well known to be important to the growth of all fruit and vegetable plants; research has also demonstrated that different plants or crops prefer different levels of nitrogen. Many farmers apply fertilizer, whether organic or inorganic in type, to boost nitrogen levels, and they add more when a crop is known to "want" or use more. Many farmers also know that instead of constantly adding fertilizer, it is possible to test the soil to measure the level of nitrogen, and they know that there are recommended amounts of fertilizer to add per square meter of soil to boost the nitrogen level by a specified amount—yet most farmers do not test and then adjust precisely. This practice is known to result in the overuse of fertilizer, which then runs off into the environment. This is a matter of priorities—fertilizer overuse and runoff is simply not a priority for many farmers in light of the various costs and benefits involved. An applicant for a patent operates a large organic strawberry farm. She decides that in order to minimize the environmental externalities of her farm (nitrogen runoff) and her fertilizer costs (organic fertilizer tends to cost more than inorganic), she will install a nitrogen monitoring probe. This probe provides daily readings to her, and she ultimately notices that her fertilizer use has indeed dropped off significantly, since she is adding only the amount needed (less than before) and she is adding it at fairly regular intervals (which predictably enough, has aided in absorption after watering and rainfall). She decides to share her process with others, [27/28] but she thinks it might be worth sharing at a price. She therefore files a utility patent application for a method of optimizing levels of the soil, and then repeatedly: (1) determining the level of nitrogen in the soil, (2) comparing the nitrogen level to the agricultural standard for the target crop, and (3) (a) if the level is at or above that agricultural standard, waiting three days before repeating steps (1)-(3), or (b) if the level is below that agricultural standard, then administering organic fertilizer to correct the deficiency and waiting three days after fertilizer administration before repeating steps (1)-(3). The examining attorney at the USPTO is reading the application and studying the exclusions to patentability in the Supreme Court's section 101 caselaw. On these facts, could the examining attorney apply any of the exclusions to reject the application? (A) yes, the exclusion of abstract ideas (B) yes, the exclusion of laws of nature (C) yes, the exclusion of products of nature (D) no, none of the exclusions could apply

Answer (B) is correct. The claim described above is sufficiently comparable to the claims discussed in Mayo Collaborative Servs. that it would justify the same treatment. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). The Court ruled those claims to be unpatentable under the "natural laws" or "laws of nature" exclusion, explaining that while the claims nominally recited elements of a process beyond the "law of nature," the other elements, even when combined, did not present an "inventive concept" that was "sufficient to ensure that the patent in practice amount[ed] to significantly more than a patent upon the natural law itself." Id. at 72.

Which of the following statements most accurately describes the current importance of a copyright notice for a work written and published in 1980? (A) Copyright notices are required and works published without the copyright notice fall into the public domain. (B) Copyright notices are required and works published without the copyright notice fall into the public domain unless "cured" under the Copyright Act of 1976. (C) Copyright notice is no longer required in light of the Berne Convention. (D) Copyright notice is no longer required under the Sonny Bono Copyright Term Extension Act.

Answer (B) is correct. The current importance of a copyright notice for a work first written and published in 1980 can best be stated as follows: copyright notices are required and works published without the copyright notice fall into the public domain unless "cured" under the Copyright Act of 1976. The Copyright Act of 1976 provisions in effect in 1980 essentially still apply to this work because it was published in that year. The 1976 Act ameliorated the harsh effect of the copyright notice requirement under the 1909 Copyright Act, under which a work published without notice fell into the public domain. The 1976 Act continued to require copyright notice, but it allowed for a cure of, or excuse for the omission of, the notice in some circumstances. The cure provision continues to be relevant even though current law no longer requires copyright notice.

A law student takes photographs and videos during a vacation in Europe, making use of the camera/photo/video features of a smartphone. Which of the following statements is most accurate? (A) The law student has a valid copyright, as there is no minimum level of creativity required and courts do not assess the artistic merit of works. (B) The law student has a valid copyright on the images and video captured by the camera, assuming they are minimally creative or involve some judgment. (C) The law student does not have a valid copyright because the photographs and videos are not sufficiently creative to be copyrightable—the smartphone uses software to adjust settings, so it mechanically captured the content. (D) The law student does not have a valid copyright because only artistic and creative works of recognized stature are protected by copyright law.

Answer (B) is correct. The law student has a valid copyright on the images and video captured by the camera, assuming they are minimally creative or involve some judgment. For example, in Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005), the court identified three aspects of creativity in photographs: rendition, composition, and timing. Rendition involves photographic skill, composition involves setting the scene, and timing involves when to press the shutter, even though that may sometimes have an element of luck as well. The photographs and videos in question involve at least some selection of scene, angle, and timing.

The trademark term "Fresh Finds" for a chain of grocery stores featuring fresh produce, meats, fish, and deli products, but also selling packaged and frozen foods, is: (A) generic (B) descriptive (C) suggestive (D) arbitrary

Answer (B) is correct. The mark "Fresh Finds," for a chain of grocery stores featuring fresh produce, meats, fish, and deli products (plus other foods) is descriptive—a consumer can "find" "fresh" items there. This is true even though the stores do not sell only fresh foods, and consumers can expect more than "fresh finds." The mark nevertheless describes one characteristic of the stores.

A restaurant that is a joint venture between an executive chef and her business partner adds to its menu a chile and fruit salsa with a surprising blend of spices mixed in with the chiles and fruit. After a year on the menu, the new salsa remains incredibly popular, and no other restaurant in the area has copied it yet. The key to the flavor is not simply the ingredient list but also the order and manner in which the spices are toasted and ground together. The executive chef decided from the start to keep the recipe a secret in order to avoid having her new dish leave the restaurant along with one of the restaurant's many short-term employees. She has written down the recipe only three times, and all three are marked "confidential." One copy is at her home, stored in the files she keeps for the restaurant. A second copy is in her business partner's files for the restaurant. The third copy stays at the restaurant, but only the sous chef (the second-in-command chef) is allowed to see it. He has been told it is a trade secret. The executive chef makes the spice blend at her house so that the other employees cannot see the spices used, the proportions used, or the method of preparation. The rest of the salsa-preparation process takes place at the restaurant because it requires fresh ingredients, but the sous chef is in charge of the entire process. Could a court find the salsa recipe to be a trade secret of the restaurant within the meaning of the UTSA and DTSA? (A) Yes, because the recipe is a type of formula, and the restaurant has kept it a complete secret from competitors up to this point in time, which means its efforts have been reasonable. (B) Yes, because the recipe is kept relatively secret, and it is subject to reasonable efforts at secrecy even though there are no technological measures, locks, contracts, or other heightened protections. (C) No, because although the recipe is kept relatively secret, the efforts being taken are not reasonable because there are no technological measures, locks, contracts, or other heightened protections. D) No, because a basic food recipe, as opposed to an industrial-scale manufacturing formula or process, is not the kind of formula or other business or technical information that is the proper subject matter for trade secret protection.

Answer (B) is correct. The measures required for secrecy under the Uniform Trade Secrets Act (UTSA) and federal civil Defend Trade Secrets Act (DTSA) are "reasonable" efforts or measures at secrecy, given the particular circumstances; what is reasonable will vary based on the value of the information and the context. Here, with a restaurant's salsa recipe, keeping a highly limited number of physical copies rigorously separated by location and tightly restricting individual access would seem reasonable. Technology is not required. All measures to maintain secrecy will involve some cost or inconvenience, and thus a balancing of the benefits of a particular measure against its cost is necessary. See, e.g., E.I. du Pont de Nemours & Co. v. Christopher, 431 F.2d 1012 (5th Cir. 1970).

The trademark term "Jaguar" when used for automobiles is: (A) descriptive (B) suggestive (C) arbitrary (D) fanciful

Answer (B) is correct. The term "Jaguar" for automobiles is suggestive. Suggestive marks have some association with the relevant goods or services, but some "imagination" or "perception" (or maybe an "aha, I get it!" moment) is required to see the connection or association between the mark and the goods or services. A jaguar is one of the "big cat" species. Although jaguar sizes vary, the cat's characteristics include having a sleek coat and being quite strong for its size. An automobile company would like for a consumer to connect characteristics like being sleek and strong to the automobiles branded with the "Jaguar" mark—in other words, the mark "Jaguar" suggests characteristics of the automobiles.

A termination of transfer made under the Copyright Act for a work created, published, and transferred by license in the year 2000: (A) can be effectuated (exercised/carried out) in the years 2030-2035 (B) can be effectuated (exercised/carried out) in the years 2035-2040 (C) can be effectuated (exercised/carried out) in the years 2040-2045 (D) can be effectuated (exercised/carried out) at any time during the renewal term of the copyright

Answer (B) is correct. This is a straightforward application of the rule, stated in the prior question, that [t]ermination of the grant may be effected at any time during a period of five years beginning at the end of thirty five years from the date of execution of the grant; or, if the grant covers the right of publication of the work, the period begins at the end of thirty five years from the date of publication of the work under the grant or at the end of forty years from the date of execution of the grant, whichever term ends earlier. 17 U.S.C. §203(a). Here, the work was created, published, and transferred by license in the year 2000, and therefore the termination window consists of the years 2035 to 2040.

An artist specializing in sports-related subject matter depicts images of a famous professional basketball player in a series of paintings and limited-edition fine art prints. The paintings and prints include the athlete in his best-known "posture," which was flying toward the goal in the air with one arm up and his legs apart but relatively straight. This posture is well-known enough [19/20] that the player had licensed his rights to be used in silhouette by an athleticwear company as a trademark. The paintings and prints show him in a variety of settings in which the player won professional honors, such as the NBA Finals and the NCAA Final Four. The artwork therefore includes depictions of various arenas, other players and coaches in the background, and crowds of fans. The basketball player brings a right of publicity claim, and the artist argues that her artwork is exempt from the publicity tort, that the First Amendment freedom of expression protects her from liability, and that the basketball player waived his right of publicity by participating in the events depicted. Predict the likely outcome and reasoning. The court will likely: (A) find a clear violation of the right of publicity, because the First Amendment does not apply to right of publicity claims (B) find that the right of publicity might be violated on these facts, but that First Amendment free expression considerations outweigh the tort claim, given the transformative and creative nature of the works, barring relief (C) find no violation of the right of publicity because artworks are exempt from the scope of the tort claim (D) find no violation of the right of publicity because professional athletes implicitly waive their right of publicity when they agree to participate in large, well-attended public events

Answer (B) is correct. This question is based on the facts and holding in the case of ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), which involved paintings and prints depicting golfer Tiger Woods. The majority opinion concluded: Rush's work consists of a collage of images in addition to Woods's image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods's achievement in that event. Because Rush's work has substantial transformative elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods's right of publicity must yield to the First Amendment. Id. at 938. Courts are split on how to approach situations like this one, and the Sixth Circuit panel was divided on the facts of this particular cases. As discussed below, however, none of the other possible answers is correct.

79. (Look to chart in book) Two competing inventors, C and D, independently develop an invention. Here is the timeline for the inventors' activities: On these facts alone, as between C and D, who should own the patent rights to the invention under applicable U.S. patent law? (A) C, because the first to reduce an invention to practice gets the rights, absent abandonment, suppression, or lack of diligence. (B) D, because the first inventor to file a patent application gets the rights, as long as there has been no earlier disclosure or filing that destroys novelty. (C) D, because D was the first to file and less than a year passed between C's reduction to practice and D's patent filing, which means the invention is still novel as of D's filing date. (D) Neither, because while D was the first to file, C reduced the invention to practice before D's patent filing, which means the invention is not novel as of D's filing date.

Answer (B) is correct. Under current U.S. law—namely, the changes to novelty and priority instituted by the AIA—the dominant means of determining priority will be the order of the applicants' effective filing dates, see 35 U.S.C. §102(a)(2), although an earlier public disclosure or patent filing by a party other than the first applicant to file could immediately destroy the novelty of the claimed invention. See 35 U.S.C. §102(a)-(b) (barring a patent either (1) if a third party has earlier disclosed the claimed invention as set forth in section 102(a)(1) (or described the invention in a filing as set forth in section 102(a)(2)) or (2) if the applicant's own filing is made after [135/136] the section 102(b)(1) grace period (further discussed below with respect to Answer (C)) has passed). Under these facts, which did not provide that C publicly disclosed the invention after reducing it to practice, D's application, which was filed first, will not be barred by C's activities.

Under present law, the owner of a copyright in a sound recording possesses which of the following rights: (A) reproduction and distribution, but not public performance or public display (B) reproduction, distribution, and public performance by digital transmission, but not general public performance or public display (C) reproduction, distribution, and full public performance rights, but not public display (D) reproduction, distribution, full public performance rights, and public display

Answer (B) is correct. Under present law, the owner of a copyright in a sound recording possesses the following rights—reproduction, distribution, and public performance by digital transmission, but not general public performance or public display. It is important to recognize that there are two copyrights on any song that has been recorded—the copyright in the musical work and the copyright in the sound recording. Authors of sound recordings do not have the full range of rights, whereas songwriters receive the full bundle of sticks. Section 106 grants the following rights: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Your client wishes to record and sell 1000 copies of a cover version of a copyrighted song (like the Blackberry Smoke and Amanda Shires version of Tom Petty's song, "You Got Lucky"). The easiest way to record and sell these cover versions is to: A) obtain a public performance right from BMI, ASCAP, or SESAC (B) obtain a mechanical (reproduction) license from the Harry Fox Agency (C) obtain a distribution right from the songwriter (D) obtain a public display right from the songwriter

Answer (B) is correct. Your client wishes to record and sell 1000 copies of a cover version of a copyrighted song (like the Blackberry Smoke and Amanda Shires version of Tom Petty's song, "You Got Lucky"). The easiest way to do this is to obtain a mechanical (reproduction) license from the Harry Fox Agency. Section 115 of the Copyright Act provides for compulsory mechanical licenses both to make and distribute new sound recordings based on musical works that have been previously recorded and released (i.e., cover versions of songs). See 17 U.S.C. §115(a). The cover version cannot "change the basic melody or fundamental character of the work." §115(a)(2). The Harry Fox Agency is the easiest way to obtain and pay the statutory royalty for such a license. See http://www.harryfox.com. This type of license to reproduce musical works is not available for other types of copyrightable works. There are very important limits on the scope of what can be done with a mechanical license; if the makers of a cover song wish to have additional rights, they will need to negotiate directly with the owners of the rights to the song.

Assume for the purposes of this question (although not for purposes of the last question!) that (1) the salsa recipe in Question 49 was a trade secret of the restaurant and would be protected under the UTSA or DTSA, and (2) the sous chef moved out of the state to work as a chef at another restaurant, where he then began preparing the same chile and fruit salsa, which the second restaurant then placed on its menu and sold. Using only these facts, would either the sous chef or the other restaurant be liable for misappropriation of the trade secret under the UTSA and DTSA? Why or why not? (A) Both would be liable for misappropriation. The sous chef would be because he is using the secret for the benefit of the second restaurant in breach of a duty to the first restaurant to limit the use of the information, and the second restaurant would be because it is using the recipe after having derived it through a person who owed a duty of confidentiality and a duty to limit the use of the recipe. (B) The sous chef would be liable, but the second restaurant would not be liable. The sous chef would be liable because he is using the secret for the benefit of the second restaurant in breach of a duty to the first restaurant to limit the use of the information, but the second restaurant would not be, and can use the recipe, because it has no reason to know it derived the recipe through a person who owed a duty of confidentiality or a duty to limit use of the recipe. (C) The sous chef would not be liable, but the second restaurant would be liable. The sous chef would not be because he is not directly benefiting from the use of the recipe at the second restaurant, but the second restaurant would be because it is profiting from its use of the recipe and should have known that it was derived from the sous chef's work at the first restaurant. (D) Neither would be liable for misappropriation. The sous chef would not be because he is not directly benefiting from the use of the recipe at the second restaurant, and the second restaurant would not be, and can use the recipe, because it has no reason to know it derived the recipe through a person who owed a duty of confidentiality or a duty to limit use of the recipe.

Answer (B) is correct. Under these facts, which include those in the previous question, the sous chef has acquired the recipe under circumstances giving rise to a duty to maintain its secrecy and to limit its use to use for the benefit of the first restaurant. He therefore cannot use the recipe after leaving for a new employer. The executive chef's measures to maintain secrecy were obvious and made clear to the sous chef; she segregated the different aspects of the process and made clear that she purposely restricted access to the recipe. Once the sous chef uses the recipe at the second restaurant, he is liable for trade secret misappropriation because he is using it while knowing or having reason to know that he had acquired it under a duty of confidentiality. But as to the restaurant, the "knew or had reason to know" aspect of misappropriation is missing at the time of the use of the trade secret. Under the given facts, there is no indication that the salsa's "fame" had spread far and wide enough to be known "out of the state," and one cannot assume that the sous chef voluntarily disclosed the provenance of the recipe to his new employer or that the new employer would otherwise have had reason to know that it was not a recipe concocted by the sous chef himself. This means that the second restaurant does not have reason to know that the recipe was a trade secret taken by the sous chef from a former employer. As such, the second restaurant can use it (under these facts) because it has no reason to know it is deriving this information through someone who owes a duty of confidentiality or a duty to limit use of the information.

When an engineer or other researcher in a research and development (R&D) department creates an invention during the normal course of employment, to which of the following do the rights to the invention belong in the typical R&D employment situation? (A) the employee (B) the employer (C) the rights are shared under the "shop right" doctrine (D) ownership depends upon the specific terms of the employment contract

Answer (B) is correct. When an engineer or other researcher in a research and development (R&D) department creates an invention during the normal course of employment, the rights to the invention typically belong to the employer. There are three types of employment relationships, each with different implications for ownership of the invention. Most R&D engineers and other research employees are hired specifically to perform research functions within the scope of their duties, and it is well understood that the fruits of these efforts should inure to the benefit of the employer. Thus, the inventions developed by these R&D employees within the scope of their duties are generally assigned to their employers and are then wholly owned by the employer. At the other end of the spectrum, an employee whose duties do not involve R&D work, but who develops an invention on the employee's own time and using the employee's own materials is entitled to full ownership of any resulting inventions. The third situation is known as the "shop right." This scenario involves an employee whose duties do not involve R&D work, but who develops an invention on company time or using the employer's materials, or both. In this case, the employee retains [133/134] ownership of the invention, but the employer is entitled to a non-exclusive license to use the invention for its own business operations (this right is known as a "shop right").

A mechanical engineering group working for an automotive parts supplier (P) determined that a new means of mounting a spare tire underneath the cars should be developed. The product development, patenting, and manufacturing process at company P consisted of, in this order: identifying the problem; researching existing (and historical) spare tire mounts; brainstorming possible new solutions; using pencil and paper to do some rough sketches of the preferred design; using computer-aided design to do technical drawings of that design; submitting the technical drawings and some specifications to the legal team for patenting assessment; making a model using alternate (non-realistic) materials; finalizing a complete, enabling patent application containing the drawings and claims describing the invention; sending the final specifications and drawings to a contract fabricator (company F) to obtain a physical sample of the item using real-world materials; receiving and testing the sample from the fabricator (F); filing the complete, enabling application with the USPTO; beginning mass production; and later receiving the granted patent (without amending the claims). Later, an engineer from F, the fabrication company, claimed to be a joint inventor with the engineers from P, the parts supplier. This claim by the engineer arose only after P, the parts supplier, filed an infringement lawsuit against an accused infringer that was manufacturing infringing spare tire mounts. The fabrication engineer then attempted to license his ownership interest in the invention to that infringer, which would provide it with a defense to the infringement claim. Determining the date of invention is vital to the court's inquiry into inventorship of the claimed spare-tire-mount invention. Identify the earliest date of invention for the final, patented design that is clearly supported by the facts above. (A) the first rough sketches of the preferred design with pencil and paper (B) finalizing a complete, enabling patent application containing the drawings and claims describing the invention (C) receiving and testing the product sample that the fabricator produced using the claimed design, to actually reduce the invention to practice (D) filing the complete, enabling application with the USPTO (containing the drawings and claims describing the invention) Questions » Topic 7 • Patent Law—Subject Matter & Validity

Answer (B) is correct. While one possible date of invention for the invention as filed is always the filing date of that application, which is also the date of "constructive reduction to practice," a party needing to prove an earlier date can use other evidence to do so. An earlier date of invention that P could prove here comes from the evidence that it had earlier finalized a complete, enabling patent application containing the drawings and claims describing the invention just as it was later claimed in the filed patent application—which is the situation in the factual scenario above.

Your client runs across an old poem, originally written and published in Latin by an American author in the year 1915 and translated into English in 1935. Your client wishes to copy the poem, in its entirety, for a website containing poetry. The client has the original 1915 text and the 1935 translation in his library. Which of the following statements would most accurately summarize your advice to the client? (A) You can freely use either the Latin or the English version of the poem, as any copyright has necessarily expired and the poem is in the public domain. (B) You can freely use the Latin version, as the copyright has necessarily expired and the poem is in the public domain, but the English version may still be protected by copyright. (C) You cannot use either version as the copyrights have not necessarily expired. (D) You can freely use either version because of the fair use defense.

Answer (B) is correct. You can freely use the 1915 Latin version, as the copyright in that published version has necessarily expired and the poem is in the public domain, but the 1935 English version may still be protected by copyright. Copyrights for works published before January 1, 1978 are governed by the Copyright Act of 1909, with extensions provided by later amendments, for a maximum of 95 years from publication (28-year initial term plus 67 years in the renewal term). Works published under the 1909 Act, which provided for renewal terms, can thus still be copyrighted as long as the copyright renewal was effectuated. (If a work was originally copyrighted between January 1, 1964, and December 31, 1977, a 1992 amendment made the renewal automatic.) Works published on or after January 1, 1978 are governed by the Copyright Act of 1976.

Assume that a movie is produced in the year 2020. The movie is a "work made for hire." What is the current term of copyright protection for this work? (A) 75 years from date of publication or 100 years from date of creation, whichever term is shorter (B) 95 years from date of publication or 120 years from date of creation, whichever term is longer (C) 95 years from date of publication or 120 years from date of creation, whichever term is shorter (D) life of the author plus 70 years

Answer (C) is correct. A movie is produced in the year 2020. The movie is a "work made for hire," which is true of nearly all movies released commercially. The current term of copyright protection for this work (as of the date of this study guide) is 95 years from date of publication, or 120 years from date of creation, whichever term is shorter. See 17 U.S.C. §302(c) ("In the case of an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.").

A student is hired to do research for a professor and provides 10 pages of material, which the professor copies verbatim into a 30-page article. Which of the following statements is most accurate? (A) The professor and student are joint authors under the Copyright Act, given that each has contributed copyrightable expression. (B) The professor and student are joint authors under the Copyright Act, because the professor stole the work from the student, who would share any proceeds and rights. (C) The professor is the sole author of the work under the Copyright Act, given that there was no intent to form a joint work. (D) The professor is the sole author of the work under the Copyright Act, given that the professor wrote more than 50 percent of the work.

Answer (C) is correct. A student is hired to do research for a professor and provides 10 pages of material, which the professor copies largely verbatim into a 30-page article. The professor is most likely the sole author of the work under the Copyright Act, given that there was no intent to form a joint work. Section 101 of the Copyright Act defines a joint work as "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. §101. As discussed in Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), two elements must be proven to form a joint work—(1) each author must make independently copyrightable contributions to the work and (2) there must be mutual intention that the contributions be combined into a unitary whole as a joint work. Although the student assistant did contribute copyrightable material, it is unlikely that there was a mutual intention to form a joint work. See, e.g., Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998); Clogston v. American Academy of Orthopaedic Surgeons, 930 F. Supp. 1156 (W.D. Tex. 1996).

What copyrighted work or works are embodied in the download or a stream of a file containing a song, such as the download or stream of a song like Taylor Swift's "We Are Never Ever Getting Back Together"? Select the best answer from the following: (A) a musical composition (B) a sound recording (C) both a musical composition and a sound recording (D) a sound recording and a work made for hire

Answer (C) is correct. A typical download or stream of a song file embodies two different copyrighted works: a musical composition and a sound recording. The musical composition involves the words and music, created by songwriters. Swift co-wrote the song with its producers, Max Martin and Karl Johan Schuster (known professionally as Shellback). Swift then created the sound recording, the version of the song that fans would be familiar with. Thus, most downloaded or streamed song files embody two different copyrighted works.

An ordinary citizen (i.e., not a celebrity) is photographed while walking down a public street. The person's image is then used in a cellular phone advertisement without the citizen's consent. What is the best intellectual property claim to assert in this situation? (A) copyright (B) false endorsement (C) right of publicity (D) trade secret

Answer (C) is correct. An ordinary citizen (i.e., not a celebrity) is photographed while walking down a public street. The person's image is then used in a cellular phone advertisement without the citizen's consent. The best intellectual property claim to assert in this situation is the right of publicity. It might appear to be counterintuitive that any claim can be asserted on these facts because the individual photographed was not a celebrity and was photographed on a public street. Neither of these considerations, standing alone, would vitiate a right of publicity claim. First, ordinary persons who are not public figures or celebrities are entitled to protection under the right of publicity, as are celebrities and other public figures. In some states, the posthumous right of publicity is only available if the person's identity has commercial value at or after death. Most right of publicity cases happen to involve well-known persons because their images are often used in advertising and because they will have much higher potential recoveries for compensatory damages than ordinary persons. Second, the presence of a person on a public street does not serve as implied consent to the use of their image for advertising or commercial purposes.

Company A selects the mark CRICKET on March 15 to be used for handcrafted children's plush animal toys, test-markets it before a focus group on May 15, and begins on September 1 of that year to make use of the mark on its products in New York and the New England states. Company B, coincidentally and in good faith, also selects the mark CRICKET to be used for children's soft toys, such as those for babies. Company B selects the mark on June 1 and files a federal intent-to-use trademark application for the mark on July 1. Company B begins to make use of the mark on the goods in commerce on April 1 of the following year, after it receives USPTO approval of its application. B's use consists of selling the marked goods in retail stores in California, Oregon, Washington, and Nevada. Who should own the rights to the CRICKET trademark under the Lanham Act? (A) Company A, because it was the first to come up with the trademark. (B) Company A, because it was the first to use the trademark in commerce. (C) Company B, because it filed the intent-to-use application before Company A used the mark and ultimately received the notice of allowance. (D) Both Company A and Company B. A court should equitably divide the rights based on the geographic market areas.

Answer (C) is correct. Company B will own the rights to the mark because it filed the intent-to-use application before A used the mark and ultimately received the notice of allowance. This is true even though Company A developed the arbitrary trademark first and used the mark before Company B used it. The critical facts are that Company B filed an intent-to-use (or "ITU") application before any use in commerce by Company A. Given that Company B received a notice of allowance and proceeded to make its own use in commerce in timely fashion, it has perfected its [93/94] rights under the ITU application process and will receive all rights to the mark under federal law. Moreover, there is no evidence that Company B acted in bad faith.

Copyright registration for U.S. authors is: (A) required in order to recover any compensatory damages for copyright infringement (i.e., no compensatory damages for infringement occurring before registration) (B) required in order to obtain injunctive relief (i.e., no injunctive relief for infringement occurring before registration) (C) required as a condition precedent to filing suit (D) entirely optional and has no consequence for copyright litigation

Answer (C) is correct. Copyright registration for U.S. authors is required as a condition precedent to filing suit. Section 411 of the Copyright Act states: [176/177] Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register's failure to become a party shall not deprive the court of jurisdiction to determine that issue.

Using a random password generator to identify an employee's confidential password in order to gain access to a competitor's computer system to obtain confidential information is likely to be actionable as: (A) patent infringement [25/26] (B) trade secret misappropriation based on breach of confidence (C) trade secret misappropriation based on improper means (D) none of the above

Answer (C) is correct. Gaining unauthorized access (sometimes known as "hacking") into a competitor's computer system to obtain confidential information—in this case by using a random password generator to identify an employee's confidential password—is likely to be actionable as trade secret misappropriation based on improper means. Under section 43 of the Restatement (Third) of Unfair Competition, [i]mproper means of acquiring another's trade secret ... include theft, fraud, unauthorized interception of communications, inducement of or knowing participation in a breach of confidence, and other means either wrongful in themselves or wrongful under the circumstances of the case. Independent discovery and analysis of publicly available products or information are not improper means of acquisition.

If Sally were to sell or rent a bootleg movie DVD (which she purchased from an anonymous seller who had the bootleg DVDs in the back of his van) she would likely violate which right of the copyright owner of the movie on the DVD? (A) derivative works (B) reproduction (C) distribution (D) all of the above

Answer (C) is correct. If Sally sells or rents a bootleg DVD (which Sally purchased from an anonymous seller who had the bootleg DVDs in the back of his van) she likely violates the distribution right of the copyright owner of the movie/DVD. Section 106 grants to copyright owners the right "to distribute copies or phonorecords of the copyrighted work to the public by sale or [172/173] other transfer of ownership, or by rental, lease, or lending." This provision would be violated on the facts above.

In summer 2008, Isabelle Inventor, working out of her home workshop, develops an innovative new tool that can be used open jars. In August 2011, Inventor begins selling her device through her online store. In December 2012, Inventor files a patent application on her device. Choose one of the following as the most likely outcome for the application. (A) Inventor can obtain a patent on her device because no facts indicate she is not the first to invent or the first to file. (B) Inventor will be precluded from patenting her device because she abandoned the invention. (C) Inventor will be precluded from patenting her device because of the prior sale. (D) Inventor will be precluded from patenting her device because of the statute of limitations.

Answer (C) is correct. In summer 2008, Isabelle Inventor, working out of her home workshop, develops an innovative new tool that can be used open jars. In August 2011, Inventor begins selling her device through her online store. In December 2012, Inventor files a patent application on her device. Inventor will be precluded from patenting her device because of the prior sale beginning in August 2011, which triggers the on-sale bar in pre-AIA section 102(b). That section sets forth ways in which there can be a loss of rights to an otherwise valid patent, including an on-sale bar and a public use bar: A person shall be entitled to a patent unless—the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

In summer 2015, Isabelle Inventor, working out of her home workshop, develops an innovative new tool that can be used open jars. In August 2018, Inventor begins selling her device through her online store. In December 2019, Inventor files a patent application on her device. Choose one of the following as the most likely outcome for the application. (A) Inventor can obtain a patent on her device because no facts indicate she is not the first to invent or the first to file. (B) Inventor will be precluded from patenting her device because she abandoned the invention. (C) Inventor will be precluded from patenting her device because of the prior sale. (D) Inventor will be precluded from patenting her device because of the statute of limitations.

Answer (C) is correct. In summer 2015, Isabelle Inventor, working out of her home workshop, develops an innovative new tool that can be used open jars. In August 2018, Inventor begins selling her device through her online store. In December 2019, Inventor files a patent application on her device. Inventor will be precluded from patenting her device because of the prior sales beginning in August 2018. Post-AIA rules of novelty and priority still allow an inventor a one-year grace period, but only as to the inventor's own disclosures, by excluding from the prior art the inventor's own disclosures occurring within the year before filing. This rule is thought to encourage the prompt filing of patents. Although it is more restrictive than the pre-AIA section 102(b) grace period, which covered third-party disclosures as well, the U.S. rule remains more lenient than the patent law rules in many foreign countries, which do not provide a one-year grace period.

Under the Lanham Act, how can priority as to trademark ownership be attained over others? Select the best answer from those provided. (A) use of the mark in commerce only (B) use of the mark in commerce or filing a federal application with a bona fide intent to use (regardless of whether actual use in commerce ever takes place) (C) use of the mark in commerce or filing a federal application with bona fide intent to use (upon following the proper procedures to establish actual use in commerce) (D) use of the mark in commerce or obtaining a foreign trademark registration, if the United States and the foreign country are in the same international trademark treaty

Answer (C) is correct. Priority over others as to trademark ownership under the Lanham Act can be attained through use in commerce or filing an application with bona fide intent to use (upon following the proper procedures to establish actual use in commerce). The amended language in the Lanham Act, codified at 15 U.S.C. §1051(b)

The Visual Artists Rights Act of 1990 does not protect limited-edition or single copies of which of the following types of works? (A) sculptures (B) prints (C) architectural plans (D) photographs

Answer (C) is correct. The Visual Artists Rights Act of 1990 ("VARA") does not protect limited-edition or single copies of architectural plans. VARA provides protections for a "work of visual art," a term of art defined in the Copyright Act as follows: (1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or (2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

When is product packaging trade dress protectable under federal law? Consider the required trade dress strength or level of distinctiveness and complete the following sentence. Product packaging trade dress: (A) is always inherently distinctive and is protectable regardless of secondary meaning or acquired distinctiveness (B) is never inherently distinctive; it is protectable only upon a showing of secondary meaning or acquired distinctiveness (C) may be either non-inherently distinctive (and therefore protectable only upon a showing of secondary meaning or acquired distinctiveness) or inherently distinctive (protectable regardless of secondary meaning or acquired distinctiveness), depending on the circumstances, just like an ordinary word or design mark (D) is protected only when it is famous because it is only protectable under a dilution theory

Answer (C) is correct. Product packaging trade dress may be either non-inherently distinctive (and therefore protectable only upon a showing of secondary meaning) or inherently distinctive (protectable regardless of secondary meaning), depending on the circumstances, just like an ordinary word mark. This rule is based on the Supreme Court's holdings in two cases. The first was Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), which held that trade dress could be protected under section 43(a) of the Lanham Act if it is found either to be inherently distinctive or to have acquired distinctiveness (i.e., to have secondary meaning), rejecting an argument that secondary meaning was always required for the protection of unregistered trade dress (in that case, it was the trade dress of a restaurant). The second was Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205 (2000), which held that although packaging and restaurant trade dress can be (but are not always) inherently distinctive, product design trade dress is deemed never to be inherently distinctive.

Which of the following accurately lists the activities that directly infringe U.S. patent rights in a product if done without authority of the patent owner? (A) making the invention, reconstructing the invention, offering to sell the invention, selling the invention (all in the United States); importing the invention into the United States. (B) making the invention, offering to sell the invention, selling the invention (all in the United States); importing the invention into the United States; exporting the invention from the United States. (C) making the invention, offering to sell the invention, selling the invention, using the invention (all in the United States); importing the invention into the United States. (D) making the invention, selling the invention, using the invention (all in the United States); importing the invention into the United States; exporting the invention from the United States.

Answer (C) is correct. Review both section 154(a)(1) and section 271(a) for a list of the exclusive rights of the patent owner and the scope of directly infringing acts, respectively. In section 271(a), the language is "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patent invention during the term of the patent therefor, infringes the patent."

The first copyright law in the United States, enacted in 1790, did not protect which category of works? (A) books (B) charts (C) sculptures (D) maps

Answer (C) is correct. The 1790 Copyright protected only three types of works, stating: "Be it enacted ... That from and after the passing of this act, the author and authors of any map, chart, book [156/157] or books ... shall have the sole right and liberty of printing, reprinting, publishing and vending such map, chart, book or books, for the term of fourteen years from the recording the title thereof in the clerk's office, as is herein after directed...." Copyright Act of 1790, Section 1, 1 Statutes at Large 124.

The Great Food Guide (GFG) has assembled a great deal of information on New Orleans restaurants over the years. It has created two lists, both available via the GFG.com website: (1) a directory containing (in alphabetical order) the names, addresses, web address, and telephone numbers of all New Orleans restaurants (the "Directory"), and (2) a guide called "GFG's Guide to the 50 Best New Orleans Restaurants," which lists 50 restaurants selected based on GFG's assessment of quality, cuisine, and ambiance, with detailed explanations of the relative merits of each establishment (the "Guide"). Consider the minimum standard of creativity for copyright protection as set forth in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991). Under the Court's analysis in that case, which of the following statements is most accurate? (A) Both the Directory and the Guide are copyrightable. (B) Neither the Directory nor the Guide is copyrightable. The Directory is not copyrightable, but the Guide is copyrightable. (D) The Directory is copyrightable if it is carefully maintained and updated on a regular basis, and the Guide is copyrightable in any event.

Answer (C) is correct. The Directory is not copyrightable, but the Guide is copyrightable. Applying the minimum standard of creativity for copyright protection as set forth in Feist, a directory listing (in alphabetical order) the names, addresses, web address, and telephone numbers of all New Orleans restaurants is not copyrightable.

What test has the Supreme Court adopted for defining a "work made for hire" by an employee under copyright law? (A) contractual right to control (B) actual control (C) common law agency (D) formal, salaried employee

Answer (C) is correct. The Supreme Court has adopted the common law agency test for defining a "work made for hire" by an employee under copyright law. See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The case involved a homeless advocacy group, which hired a well-known sculptor to create a work depicting the homeless. The Court ultimately held that the sculptor owned the copyright to the work, even though the advocacy group owned the physical sculpture itself. To determine whether a work is created by an independent contractor or whether it is a work made for hire (in which case the hiring party would own the copyright), the Court considered all four of the tests listed in this question, but adopted the common law agency standard. This test involves analysis of the following factors: In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. Id.

What would be the basic term of protection for a design patent that issued on an application filed today? (A) 20 years from the date of patent filing (B) 14 years from the date of patent issuance (C) 15 years from the date of patent issuance (D) 17 years from the date of patent issuance

Answer (C) is correct. The current term for newly filed design patents is 15 years from the date of issuance. Section 173 of the Patent Act states: "Patents for designs shall be granted for the term of 15 years from the date of grant." In contrast to utility and plant patents discussed above, the design patent term was not addressed by the URAA, and it continued to be governed by the prior law—which meant a term of 14 years from issuance. Then in December 2012, Congress amended section 173 to add another year to the term, but only after the United States formally acceded to an international agreement on industrial designs. ("Industrial designs" are what many countries use to protect the IP that the United States protects with design patents). The change became effective in May 2015; all design patents issued in the United States on applications filed on or after May 13, 2015 have a term of 15 years from the grant.

Patentee owns a patent that claims a process for manufacturing a soft contact lens (for vision correction) that utilizes a specified plastic composition. The plastic composition is not itself patented, and it can be used in manufacturing other items. Seller makes and sells specifically sized and shaped pieces of this plastic composition, and the size of each little piece of the plastic composition contains precisely the right amount of material to make one contact lens. Unsurprisingly, Seller's customers, the Manufacturers, use these plastic pieces to make contact lenses—and it turns out that they do so using Patentee's patented process. Assume that the Manufacturers' lens-making processes infringe the patent owned by Patentee and that the patent is valid. In a patent infringement lawsuit brought by Patentee against Seller, could Seller be found liable for infringement on the facts above? Select the best answer. (A) No, because Seller is not using Patentee's patented process, and it is not selling products made using the patented process. (B) No, because there is no evidence that Seller is encouraging or inducing the Manufacturers to use the pieces of plastic in the patented process. (C) No, because there is no evidence that Seller has knowledge of the patent owned by Patentee and that the Manufacturers are not licensed to use the patented process. (D) Yes, because Seller is selling a material, the little pieces of plastic, for use in practicing a patented process; the pieces are a material part of the process, especially adapted for use in infringement of the process, and not staple articles of commerce as sold by Seller, whose lack of knowledge does not matter because patent infringement is strict liability.

Answer (C) is correct. The facts here did indicate that Seller's product was especially adapted for making lenses using this type of plastic—based on the size of the pieces of plastic—but that does not mean that Seller knows or has reason to know that there is a process patent covering a process for manufacturing a soft contact lens using this composition, or that the Manufacturers do not have a license to use the process. Although the direct infringement liability provision, section 271(a), does not include a knowledge element, the secondary or indirect infringement provisions of section 271(b)-(c) both do. See Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (Aro II) ("[A] majority of the Court is of the view that §271(c) does require a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing.") (emphasis added); Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (relying on Aro II's interpretation of §271(c) and the history of the acts later separated by Congress into subsections (b) and (c) of section 271 to conclude that knowledge of the patent is also required for inducement under section 271(b)). This fact pattern best fits the section 271(c) contributory infringement pattern, but there can be overlap with section 271(b) inducement on some facts, which could, depending on circumstances, include facts like these.

Worldwide, what is the most common method for determining patent ownership between competing independent inventors? The proper owner of rights in an invention is: (A) the first inventor to conceive of an invention (B) the first inventor to reduce an invention to practice (C) the first inventor to file a patent (D) all competing independent inventors with co-pending patent applications, if more than one inventor has overlapping dates of conception, reduction to practice, and filing. They are treated as joint inventors and are required to share the rights.

Answer (C) is correct. The most common method for determining priority of patent ownership worldwide is that the first inventor to file a patent application is entitled to ownership of the rights.

Select the best characterization for how the right of publicity can be viewed: (A) as a commercial right only (B) as a personal privacy right only (C) as both a personal privacy right and a commercial right (D) as both a personal privacy right and a federal constitutional right

Answer (C) is correct. The right of publicity can be viewed as both a personal privacy right and a commercial right. With regard to personal privacy foundations, Warren and Brandeis in their 1890 article identified the right of publicity as one of the four privacy torts. See Samuel D. Warren & Louis D. Brandeis, The Right To Privacy, 4 HARV. L. REV. 193 (1890). Thus, the right of publicity originated as a personal right, akin to defamation, but it has developed in more recent years into a significant commercial right. The Restatement (Third) of Unfair Competition §46 focused on the commercial aspects of this tort: "One who appropriates the commercial value of a person's identity by using without consent the person's name, likeness, or other indicia of identity for purposes of trade is subject to liability for the relief appropriate under the rules stated in §§48 and 49."

What are three fundamental requirements for a valid utility patent? (A) novelty, usefulness, and distinctness (B) novelty, nonobviousness, and distinctness (C) novelty, nonobviousness, and usefulness (D) novelty, nonobviousness, and ornamentality

Answer (C) is correct. The three fundamental requirements for a utility patent are novelty, nonobviousness, and usefulness. Section 101 of the Patent Act requires usefulness by its very terms: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." See 35 U.S.C. §101. Section 102 sets out the content of the novelty requirement, which examines whether the invention—in full—was available to the public ("the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public") or described in a prior-filed patent application before the filing date of the application containing the claimed invention. See 35 U.S.C. §102(a). Certain exceptions to the general novelty rule are set forth in section 102(b).

On which of the grounds listed below may the validity of an incontestable registration be challenged by an accused infringer? On the grounds that the mark in question is: (A) generic (only) (B) generic or descriptive (without secondary meaning) (C) generic or functional (D) generic, descriptive (without secondary meaning), or functional

Answer (C) is correct. The validity of an incontestable registration can be challenged by an accused infringer on the ground that the mark is either generic or functional, but no challenge based on descriptiveness can be mounted. As discussed previously (see Question 18 in Topic 1 and Question 24 in Topic 2), the trademark incontestability doctrine prevents challenges to the ownership and validity of trademarks (with certain exceptions) that have been registered and continuously used without successful challenge for five years if an affidavit of incontestability is filed. The incontestability provision carves out certain bases for challenge, which means some "contestability" remains: "Except on a ground for which application to cancel may be filed at any time under paragraphs (3) and (5) of section 14 of this Act, ... the right of the registrant to use such registered mark ... shall be incontestable." 15 U.S.C. §1065.

How can the plaintiff owner of a utility patent prove that a product being made and sold by an accused infringer is, in fact, infringing on the patentee's rights in the patented invention? (A) proving that the patented invention and the defendant's product are, in light of the prior art, substantially the same to the ordinary observer, so as to deceive such an observer (B) proving that the patented invention and the defendant's product are, in light of the prior art, substantially the same to a person having ordinary skill in the art, so as to deceive such a person (C) proving that the patented invention and the defendant's product are the same, by comparing all elements of a claim to the product and showing each claim element to be individually present in the product, either literally or through an equivalent (D) proving that the patented invention and the defendant's product are the same, by comparing all elements of a claim to the product and showing that the defendant's product is either literally the same or is the overall equivalent of the patented invention as a whole

Answer (C) is correct. This answer includes both literal infringement and infringement through the doctrine of equivalents, both of which would allow a patentee to show that an accused infringer's making and selling activities violated the patentee's rights under section 271(a). Literal infringement, as the term implies, involves a showing that the accused device (i.e., the defendant's product) reads on every element of the claimed invention—it is a duplication of the invention as it was described in the claim. While a precise definition of the doctrine of equivalents is elusive, it is clear that it must be applied individually to each element of a patent claim—not to the claim or to the invention as a whole.

A toy developer has created a new toy for younger children that combines elements of known technologies to provide visual and audial entertainment; the toy has a small touch screen plus some other raised and lighted buttons that visually match the on-screen icons. The toy lights up and makes fun sounds and screen images when the child interacts with the colored icons and buttons in a matching pattern. Could the examining attorney at the USPTO properly reject an application to patent the new toy for a lack of usefulness or lack of utility, relying on section 101 as it is currently interpreted and applied? (A) yes, because the toy described has insufficient use or utility, given that it has no new "beneficial use" or function, and is just for fun, making it "frivolous and insignificant" (B) yes, because the toy described has insufficient use or utility in that it does not "promote the progress of ... useful arts," which broadly means advancing science or technology (C) no, because the toy described has a sufficient use or utility in its means of entertaining children playing with the toy (D) no, because the toy described has a sufficient use or utility in its capacity to help children learn basic shapes and colors

Answer (C) is correct. Under current U.S. law, the usefulness or utility requirement is fairly minimal, and it simply requires the invention to be operable (as opposed to being widely known not to work, such as with a perpetual motion machine) and capable of providing an identifiable benefit or use. Entertainment is such an identifiable benefit or use, and a variety of new toys have been patented over the years (having met the remaining requirements of patentability, of course). These facts describe a "toy" that provides "visual and audial entertainment" in a particular way: a "matching" activity that then triggers the toy to "light[] up and make[] fun sounds and screen images."

Consider an application containing only claims effectively filed before March 16, 2013 and compare the following statements related to novelty of inventions. Which statement below provides the most complete and accurate list of requirements for novelty of an invention in such an application? (Note: None of the statements below contains a comprehensive list of the requirements for novelty of an invention in such an application; you are simply asked to select the statement that, as among the choices, contains the most complete and accurate list.) (A) The invention was not patented or described in a printed publication before the date the patent applicant invented it. [29/30] (B) The invention was not known or used, and it was not patented or described in a printed publication, in the United States before the date the patent applicant invented it. (C) The invention was not known or used in the United States, and it was not patented or described in a printed publication anywhere in the world, before the date the patent applicant invented it. D) The invention was not known or used, and it was not patented or described in a printed publication, anywhere in the world before the date the patent applicant invented it.

Answer (C) is correct. Under pre-AIA law, novelty requires assessment of knowledge and use of the invention in the United States, as well as patents and printed publications anywhere in the world, all prior to the date of invention by the applicant. This standard for novelty is set forth in pre-AIA section 102(a) of the Patent Act, which states: "A person shall be entitled to a patent unless ... the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent." In pre-AIA section 102, Congress expressly drew a distinction between knowledge or use of an invention in the United States—which would preclude patentability—and knowledge or use abroad, which would not. On the other hand, Congress did not draw that geographic distinction for patents and printed publications; it deemed information published or patented anywhere in the world to be sufficiently available to preclude a U.S. patent. There are, of course, other barriers to patentability in pre-AIA section 102, including, but not limited to, the novelty bar created by a prior-filed U.S. patent application, which is the subject of pre-AIA section 102(e) (barring a patent when "the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent [with an exception related to the PCT]"). There are also the so-called "statutory bars," which are barriers based on the applicant's failure to file a patent application within a year of certain activities or occurrences, including a domestic public use or sale or a patent or printed publication anywhere (in pre-AIA section 102(b)).

After selecting a mark for a new product, what is the most secure way for a would-be trademark owner to establish protectable trademark rights under the common law? (A) register the claim of rights under state law, usually with the state trademark or secretary of state's office (B) successfully sue a competitor under the common law of unfair competition (C) use the mark in the marketplace on the goods, or on the packaging, labels, or tags (D) use the mark with a "TM" (or "tm") or similar designation in published advertisements for the goods, such as print advertisements

Answer (C) is correct. Under the common law, trademark rights are only established through bona fide public use of the mark in the marketplace on the goods, or on their packaging, labels, or tags. The essence of trademark ownership is use of the mark in connection with goods or services in a manner that builds consumer recognition in the marketplace. As Judge Easterbrook suggested in Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429-30 (7th Cir. 1985), "[t]rademarks help consumers to select goods."

Which of the following legal theories could not be used to protect an idea? (A) quasi-contract or unjust enrichment (B) express contract (C) implied contract (D) copyright law

Answer (D) is correct. A copyright law theory of recovery will not provide relief for the unauthorized use of an idea. Section 102(b) of the Copyright Act of 1976 expressly precludes copyright protection for an idea: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. §102(b). On the other hand, state law claims for breach of express or implied contract or for quasi-contract or unjust enrichment can protect ideas in certain circumstances, depending upon applicable state law.

Assume that a famous author writes a new novel in the year 2020. The novel is written in the author's own name (i.e., not anonymously or under a pseudonym) and is not a work made for hire. What is the current term of copyright protection for this work? (A) 95 years from the date of publication or 120 years from the date of creation, whichever comes first B) 95 years from the date of creation or 120 years from the date of publication, whichever is longer (C) life of the author plus 50 years (D) life of the author plus 70 years

Answer (D) is correct. A famous author writes a new novel in the year 2020. The novel is written in the author's own name (i.e., not anonymously or under a pseudonym) and is not a work made for hire. The current term of copyright protection for this work (as of the date of this study guide) is the life of the author plus 70 years. Section 302(a) of the Copyright Act states: "Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and 70 years after the author's death." 17 U.S.C. §302(a).

A process for separating the components of crude oil was patented in 2018 based on an application filed in 2016 by Company A. Company B began to use the same process in secret—and in good faith—in 2014, and B still continues to use the process in its facilities without knowledge of A's patent. B is an integrated processor and refiner that takes these separated components and further refines and processes them within the company's own various facilities, some of which are in Mexico, which requires export of the components by pipeline. Select the option that most likely applies to Company B if Company A sues B for infringement of the patent that issues to A in 2018 for the process. Company B is likely: (A) liable for patent infringement for using the process (B) liable for exporting a product made by a process patented in the United States (C) not liable because of the innocent infringer doctrine and defense (D) not liable because of the good faith prior commercial use defense

Answer (D) is correct. A prior user (who is acting in good faith) of a later-patented manufacturing process is not liable—in the statutorily prescribed circumstances—because of statutory immunity for good faith prior users of certain types of inventions. Section 273(a) of the Patent Act states: A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if— (1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm's length sale or other arm's length commercial transfer of a useful end result of such commercial use; and (2) such commercial use occurred at least 1 year before the earlier of either— (A) the effective filing date of the claimed invention; or (B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102 (b).

A public performance takes place when a copyrighted work is performed by: (A) being played on CD in a semipublic place (B) being played live in a place open to the public (C) being transmitted beyond the place it is located by electronic means (D) all of the above

Answer (D) is correct. A public performance takes place when a copyrighted work is performed by any of the following: (a) being played on CD in a semipublic place, (b) being played live in a place open to the public, or (c) being transmitted beyond the place it is located by electronic means. As discussed earlier, a work can be publicly performed if any one of the following three events has taken place: (1) the work is performed in a public place ("a place open to the public")—here, the live performance; (2) the work is performed in a semipublic place ("any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered")—here, the playing of the CD; or (3) the work is transmitted or otherwise communicated to the public or to a public place, which includes radio and television broadcasts, as well as cable and satellite transmissions—here, the transmission by electronic means.

A trademark becomes "incontestable" under the Lanham Act when: (A) it is continuously used in interstate commerce for five years and an affidavit of incontestability has been filed (B) it is continuously used in interstate commerce for ten years and an affidavit of incontestability has been filed (C) it has been registered under federal law for five years and continuously used in interstate commerce for five years (D) it has been registered under federal law for five years and continuously used in interstate commerce for five years, and an affidavit of incontestability has been filed

Answer (D) is correct. A trademark becomes incontestable under the Lanham Act when it is registered under federal law for five years and continuously used for five years and an affidavit of incontestability has been filed. These points are found in the plain language of the statute: The right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable, provided that ... (3) an affidavit is filed within one year after the expiration of any such five-year period setting for the [certain required information related to use and lack of legal proceedings adverse to the claim of ownership].

A trademark owner has not obtained federal registration for its trademark. Which of the following statements most accurately describes the trademark owner's ability to obtain relief under the Lanham Act? (A) The trademark owner has all the same potential claims and rights as owners who have registered a trademark. (B) The trademark owner can bring suit under section 43(a) of the Lanham Act, but is limited to injunctive relief (i.e., cannot recover monetary relief). (C) The trademark owner cannot bring suit under section 43(a) until it has registered the trademark, but can bring suit upon obtaining registration. (D) The trademark owner can bring suit for all relief available under section 43(a), but does not have other statutory rights that a registered trademark holder would have.

Answer (D) is correct. A trademark owner that has not obtained federal registration for its trademark can bring suit for all relief available under section 43(a) of the Lanham Act, 15 U.S.C. §1125, but does not have other statutory rights that a registered trademark holder would have. Claims for infringement of a registered trademark can be brought under section 32 of the Lanham Act, 15 U.S.C. §1114, but section 43(a) permits claims for both registered and unregistered trademarks.

In light of the governing statutory regime as well as case law through 2019, which of the following marks are precluded from federal registration on the Principal Register? (A) disparaging marks (B) immoral marks (C) scandalous marks (D) none of the above

Answer (D) is correct. Although the Lanham Act contains a provision barring the registration of immoral, scandalous, and disparaging marks, see 15 U.S.C. §1052(a), two recent Supreme prohibitions on the ground that they are content-based infringements of First Amendment free speech rights. In Matal v. Tam, 137 S. Ct. 1744 (2017), the Court struck down the disparagement clause as a content-based provision that violates the First Amendment. The case involved an Asian-American band that sought to register the name, "The Slants," as its service mark. In 2019, the Court in Iancu v. Brunetti, 139 S. Ct. 2294 (2019), held that the refusal to register the mark "FUCT" for a clothing line on grounds that it was immoral or scandalous also violated the First Amendment. Thus, in light of these decisions, there is no longer an enforceable prohibition on the registration of immoral, disparaging, and scandalous marks despite the fact that this language is still reflected on the face of the Lanham Act.

Which of the following would be a basis for arguing that a trademark owner's mark is invalid because it has been abandoned? (A) assignment in gross (B) naked licensing (C) nonuse with intent not to resume use (D) all of the above

Answer (D) is correct. Any of the following would be a basis for a trademark abandonment defense: assignment in gross, naked licensing, and nonuse with no intent to resume use. Trademark owners can involuntarily lose or voluntarily abandon their trademark rights in several ways. Under the Lanham Act, a mark is deemed to be "abandoned" in the following circumstances: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Which of the following is not an example of an infringement of a patent? A) using a patented invention in university research laboratory experiments (B) selling an unpatented product that was manufactured using a patented process (C) importing a product covered by a patent, without making it, offering it for sale, or selling it in the United States. (D) none of the above

Answer (D) is correct. As further explained below for each of the options, all of the options provided actually provide an example of infringement of a patent under U.S. law.

Which of the following is required to be in writing under the Copyright Act? (A) an exclusive license (B) a non-exclusive license (C) an assignment of copyright (D) both (A) and (C) above

Answer (D) is correct. Both an assignment and an exclusive license are required to be in writing under the Copyright Act. Section 204 states: (a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent. (b) A certificate of acknowledgment is not required for the validity of a transfer, but is prima facie evidence of the execution of the transfer if— (1) in the case of a transfer executed in the United States, the certificate is issued by a person authorized to administer oaths within the United States; or [167/168] (2) in the case of a transfer executed in a foreign country, the certificate is issued by a diplomatic or consular officer of the United States, or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer.

As explored by the question above, courts use a test for trademark infringement that applies a number of elements. According to the federal circuit courts, this multi-element analysis means that an issue of trademark infringement presents: (A) a question of fact (B) a question of law (C) a mixed question of law and fact (D) circuits are split, with some courts adopting (A) and others adopting (C)

Answer (D) is correct. Circuits are split on whether an issue of trademark infringement presents a question of fact or a "mixed question of law and fact." Trademark infringement, as discussed in the question above, uses the "likelihood of confusion" standard, and courts apply a multi-factor or multi-element balancing test to determine whether that "likelihood of confusion" standard has been met. If the "likelihood of confusion" is an issue of fact, then an assessment of the individual factors and the overall balancing of all factors is left to the factfinder, ordinarily a jury. If it is a mixed question of law and fact, then each of the individual confusion factors are fact issues, while the final weighing or balancing of the factors is an issue of law for the court. It is important to note that the standard of review for appeals of infringement determinations is also affected by this issue. If it is a fact issue, then district court determinations will only be overturned if clearly erroneous. On the other hand, if it is a mixed question of law and fact, then the appellate court would review the legal determination de novo, with no deference given to the lower court's judgment on the ultimate issue of law—the balancing of the factors.

Company A, the owner of a patent on a new type of fastener for quickly but securely attaching automobile body parts to the automobile frame, licenses the patent to B, a manufacturer of automobile parts. B sells parts that include fasteners embodying the patent to C, an automobile [41/42] manufacturer, who in turn attaches those automobile parts to its automobile frames and sells the resulting cars—including the fasteners—to consumers. Company A wishes to sue C for patent infringement for using the patent (by attaching the parts to the frames) and selling products embodying the patent (by selling the cars), both without a license from A. Which of the following statements most accurately describes the result? (A) Company A should succeed, because selling and using are both infringing activities, and only B has a license. (B) Company A should succeed, because C is actively inducing B to make and to sell the fasteners. (C) Company A should not succeed, because C is not making the fasteners, and C is also not inducing B to make them. (D) Company A should not succeed, because the license to B to make the fasteners exhausts A's right to control the later sale and use of B's fasteners.

Answer (D) is correct. Company A, which licensed its patent to B, should not succeed with a patent infringement suit related to the fasteners manufactured by B under the license, because the license to B (which does not, on these facts, contain any limitation on the scope of the license) exhausts A's right to control the later sale and use of B's fasteners. Even though A seeks to sue C, not B, the exhaustion doctrine still applies to the licensed goods after they are sold to another party and combined with other parts. See, e.g., Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)

If Bob were to turn a published and copyrighted novel into a movie and release the movie on DVD, all without authorization, he would likely violate which right(s) of the author or other copyright owner of the novel? (A) derivative works (B) reproduction (C) distribution (D) all of the above

Answer (D) is correct. If Bob were to turn a published and copyrighted novel into a movie without authorization and then sell DVDs of the movie, he would likely violate three rights of the author of the novel—derivative works, reproduction, and distribution. The movie version would be a derivative work based on the novel. See 17 U.S.C. §101 (derivative work is "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted"). It would also very likely reproduce significant amounts of copyrightable expression from the novel (such as scenes, dialogue, detailed plot development, and characters). Finally, the sale of the DVD copies would constitute distribution of the copied portions of the work.

A medical practitioner makes use of a patented process in order to provide medical treatment. The physician is: (A) liable for patent infringement (B) liable for contributory infringement (C) not liable because the physician did not make the patented invention (D) not liable because of statutory immunity for medical providers

Answer (D) is correct. If a medical practitioner makes use of a patented process in order to provide medical treatment, the physician is not liable because of statutory immunity for medical providers. Section 287(c) of the Patent Act immunizes medical practitioners for liability for the unauthorized use of medical and surgical procedures: With respect to a medical practitioner's performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.

Company A wishes to refer to Company B's competing product in a television commercial wherein Company A is comparing the performance and desirability of its product to the performance and desirability of Company B's product. Which of the following statements captures the best advice to give to Company A? (A) Do not use Company B's name in the commercial as it will either constitute trademark dilution by blurring or by tarnishment, depending on the phrasing used. (B) Do not use Company B's name in the commercial as it will constitute trademark infringement through likelihood of confusion. (C) Company B's name can be used in the commercial as comparative advertising, even if the advertisement is misleading, as long as no false statements of fact are made. (D) Company B's name can be used in the commercial as comparative advertising, but only if the advertisement is truthful and non-misleading.

Answer (D) is correct. In this scenario, Company A wishes to make reference to Company B's competing product in a television commercial. Company B's name can be used in the commercial as comparative advertising, but only if the advertisement is truthful and non-misleading. Thus, although many companies avoid directly identifying competitor brands as a matter of policy or for pragmatic reasons, the comparative advertising defense does permit such references in limited circumstances. See R.G. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968).

How are joint inventors defined and recognized in U.S. patent law? Select the defining characteristic to become a joint inventor on a U.S. patent (containing several claims). Joint inventors must: (A) work in the same location with one another (B) make similar amounts or types of contributions to the invention claimed (C) contribute in some way to every claim in the patent (D) collaborate in some fashion and contribute to joint conception of at least one claim

Answer (D) is correct. Joint inventors are required to work together in some way (i.e., to be collaborative). Section 116 of the Patent Act states in relevant part: When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. The statute expressly disavows any requirement that joint inventors work in the same location, make the same amount or type of contribution to the invention, or contribute something as to every claim in the patent. This statutory language allows for a wide range of collaborative settings, as long as there is at least some degree of collaboration or connection between the inventors. See Kimberly-Clark Corp. v. Procter & Gamble Distributing Co., 973 F.2d 911 (Fed. Cir. 1992).

77. (Look at Chart in book) Two competing inventors, A and B, independently develop an invention. Here is the timeline for the inventors' activities: On these facts alone, as between A and B, who should own the patent rights to the invention under applicable U.S. patent law? (A) B, because the first to reduce an invention to practice gets the rights, absent abandonment, suppression, or lack of diligence. (B) B, because the first to file a patent application gets the rights, as long as no statutory bar applies. (C) B, because A's one-year delay in reducing the invention to practice is per se lack of diligence. (D) A, because the first to conceive of an invention to practice gets the rights, absent abandonment, suppression, or lack of diligence. Questions » Topic 8 • Patent Law—Ownership & Duration

Answer (D) is correct. Pre-AIA United States patent law, which applies to situations like these where a patent application contains only claims effectively filed before March 16, 2013, gives priority to the "first to conceive" an invention, as long as that inventor does not suppress, conceal, or act with a lack of diligence. See 35 U.S.C. §102(g). Thus, even though Inventor B was the first to develop a prototype, Inventor A conceived of the invention a year before B did so (and proceeded with reasonable diligence) and would still have priority under applicable law. Under pre-AIA law, first inventors could lose their priority if they failed to exercise reasonable diligence in reducing the invention to practice or if they abandoned, suppressed, or concealed their inventions. These facts do not raise those concerns, given the close timing of the invention's conception and its reduction to practice.

Sally's Hair Salon wants to hook up a CD player to its telephone system so that people placed on hold can hear music being played on the CD player in the store. Which of the following statements is the most accurate? (A) Sally has not engaged in an unlawful public performance under the Copyright Act as long as her store is small enough to fit within the "safe harbor" for small businesses. (B) Sally has not engaged in an unlawful public performance under the Copyright Act as long as she purchased lawful copies of the CDs. (C) Sally has not violated the Copyright Act because playing CDs does not constitute a public performance in any situation. (D) Sally has violated the Copyright Act by publicly performing copyrighted works.

Answer (D) is correct. Sally's Hair Salon wants to hook up a CD player to its telephone system so that people placed on hold can hear music being played on the CD player in the store. The most accurate conclusion is that Sally has violated the Copyright Act by publicly performing copyrighted works. The section 106 public performance right is implicated when a work is (1) performed in some way and (2) that performance is deemed to be public. Each of these two terms is defined in the Copyright Act. To perform a work, as defined in section 101, "means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible." Playing songs on a CD player and telephone line would clearly perform the musical works in question.

The Digital Millennium Copyright Act ("DMCA") provides copyright owners with rights regarding which of the following acts? (A) circumventing access controls on a copyright-protected work (B) selling products for circumventing access controls (C) violating the moral rights of an author in a copyright-protected work (D) both (A) and (B)

Answer (D) is correct. The Digital Millennium Copyright Act (DMCA) provides copyright owners with rights regarding both anticircumvention and anti-trafficking. First, under its anticircumvention provision, the DMCA prohibits a person from circumventing a technological measure that effectively controls access to a copyrighted work. This provision states: "No person shall circumvent a technological measure that effectively controls access to a work protected under this title." 17 U.S.C. §1201(a)(1)(A). To circumvent a technological measure means: "to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner." 17 U.S.C. §1201(a)(3)(A). A technological measure "effectively controls access to a work" when the measure "in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work." 17 U.S.C. §1201(a)(3)(B). Second, the DMCA also prohibits trafficking in anticircumvention devices. See 17 U.S.C. §1201(a)(2) ("No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that—(A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title; (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or (C) is marketed by that person or another acting in concert with that person with that person's knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title."); Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), aff'd sub nom., Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001).

Consider the ability to protect the color green as a trademark for chewable vitamins for adults (that is, the vitamin tablets are themselves are green in color). The vitamins have also been flavored with mint to make them more palatable. The application to protect the green color as a mark for chewable vitamins that are mint flavored would likely be considered: (A) descriptive, and protectable only upon a showing of secondary meaning (B) suggestive, and protectable without a showing of secondary meaning (C) arbitrary, and protectable without a showing of secondary meaning (D) unprotectable on grounds of functionality (i.e., aesthetically functional)

Answer (D) is correct. The attempt to protect the color green for chewable vitamins that are also mint flavored presents a challenge in trademark law. This type of trademark application would most likely be unprotectable on grounds of functionality (i.e., aesthetically functional) because the green color can help consumers easily identify the flavor they can expect when they chew the vitamin tablets, given that in the United States, the consuming public often expects mint flavor and green color to correspond with one another. With the mint flavor itself remaining free for other producers to use under these facts, other producers should remain free to use the color green to communicate to consumers the flavor of the vitamin tablet in the non-reputation-related way that consumers have come to expect for vitamin products. In other words, barring the use of green to color a chewable mint-flavored vitamin would put the other producers at a significant non-reputation-related disadvantage in the vitamin marketplace. This is the essence of "functionality" in trademark, although here it is an appearance-based functionality rather than functionality based on whether the product works better or fulfills its intended purpose (as a vitamin product).

What is the current copyright duration for a joint work? (A) 95 years from the date of publication or 120 years from the date of creation, whichever comes first (B) 95 years from the date of creation or 120 years from the date of publication, whichever is longer (C) life of the last surviving author plus 50 years (D) life of the last surviving author plus 70 years

Answer (D) is correct. The current copyright duration (as of the date of this study guide) for a joint work is the life of the last surviving author plus 70 years. See 17 U.S.C. §302(b) ("In the case of a joint work prepared by two or more authors who did not work for hire, the copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author's death.").

Federal trademark law contains various remedial provisions, including injunctive relief and monetary awards. The frequency varies, however, for awarding the two. Which of the following statements most accurately describes the approach taken by federal trademark law regarding the frequency of awarding injunctive relief and monetary awards? (A) The presumptive form of relief is injunctive, and monetary awards are rarely available. (B) The presumptive form of relief is monetary, and injunctions are rarely available. (C) Injunctive relief is frequently granted, and monetary awards are only available upon a showing of bad faith. (D) Injunctive relief is frequently granted, and monetary awards are usually available upon a showing of bad faith or actual harm.

Answer (D) is correct. The following statement most accurately describes the approach taken by federal trademark law to questions of remedies—injunctive relief is frequently granted, and monetary awards are usually available upon a showing of bad faith or actual harm. There are varying standards for an award of profits around the country as noted below, and the Supreme Court granted certiorari on the issue in June 2019.

The strongest theory for infringement of a long-standing and widely recognized trademark such as the Nike "swoosh" design mark (below), when used by someone in a totally unrelated field of enterprise, such as a food truck selling tacos, is: (A) unfair competition under state law (B) federal trademark infringement under section 32 or section 43(a) (C) dilution by tarnishment (D) dilution by blurring

Answer (D) is correct. The strongest theory for infringement of a long-standing and widely known trademark such as the Nike "swoosh" design mark when used by someone in a totally unrelated field or enterprise, such as a food truck selling tacos, is dilution by blurring. Because of the wide disparity in the product markets in this situation, proving a likelihood of confusion is difficult. A theory of dilution resulting from blurring the selling power of the famous Nike swoosh mark is therefore a stronger claim than the theory that there was confusion as to source or sponsorship of the defendant's taco truck. Even if the ordinary consumer would not be confused, the distinctive quality of the plaintiff's famous design mark is damaged when the name is used to market unrelated products or services. See 15 U.S.C. §1125(c)(2)(B) (defining "dilution by blurring" as an "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark"). Over time, if these uses were allowed to proceed unabated, the swoosh design, when seen being used as a mark, would no longer automatically bring to mind the maker of athletic shoes and accessories.

Which of the following statements most accurately describes the term of protection for trademarks under the Lanham Act? (A) Trademarks are limited to a 10-year term. (B) Trademarks can be perpetual as long as the registration is renewed. (C) Trademarks can be perpetual as long as they have not become generic or lost secondary meaning. (D) Trademarks can be perpetual as long as they have not been abandoned or become generic.

Answer (D) is correct. The term of protection for trademarks under the Lanham Act can be perpetual as long as the trademark has not been abandoned and has not become generic. The Lanham Act protects both registered and unregistered marks; even as to a registered mark, there is no time limit on the ultimate duration of a trademark registration. Each registration period is 10 years, but the registration may be renewed for an unlimited number of additional 10-year periods. Renewals of registrations are subject to statutory requirements—many administrative—but with a primary substantive requirement of affirming and proving continued bona fide use in commerce in connection with the goods and services listed in the registration. See 15 U.S.C. §§1058-59. Despite this potential for perpetual protection, a trademark can always be challenged on grounds that it has been abandoned or has become generic. See 15 U.S.C. §§1059 (providing no limit on the number of times a registration may be renewed), 1064(3) (allowing a cancellation petition to be filed at any time if the mark has become generic or is abandoned), & 1115 (preserving abandonment and genericness as defenses to any action for infringement of a registered trademark).

The trademark term "Nikon" when used for cameras and related products is: (A) descriptive (B) suggestive (C) arbitrary (D) fanciful

Answer (D) is correct. The trademark term "Nikon" for cameras and related products is fanciful. It is a word that was coined specifically to be a trademark.

The trademark term "Penguin" for paperback books and a book publishing company is: (A) generic (B) descriptive (C) suggestive (D) arbitrary

Answer (D) is correct. The trademark term "Penguin" used for paperback books and a book publishing company is arbitrary. To be arbitrary, the mark must have no connection to the underlying product, such as the commonly used example of "Apple" for computer products. There is no particular connection between penguins and books.

Which of the following would not be actionable under the right of publicity, if it were commercially used without the individual's consent? (A) a sound-alike performance closely imitating an individual's voice (B) a look-alike performance closely imitating an individual's appearance C) a signature of an individual, who is a private citizen (D) personal information in a book written by a famous individual

Answer (D) is correct. The use of personal information in a book written by a famous individual would not be protected under the right of publicity. The expression in the book would be the subject of copyright protection, although the facts therein would not be. On the other hand, a sound-alike performance, a look-alike performance, and most clearly a signature can give rise to liability for a violation of the right of publicity, depending upon applicable state law. Signatures are commonly protected under standard formulations of the right of publicity, and some courts have expanded the right to cover sound-alike performance and look-alike performances. See, e.g., Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (sound-alike Bette Midler commercial for Ford automobiles); Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997) (animatronic, life-size figures resembling Cliff and Norm from television series Cheers, and therefore also resembling the individuals who played those roles). See also White v. Samsung Electronics America, Inc., 989 F.2d 1512 (9th Cir. 1993) (robot evoking Vanna White found potentially actionable).

78. (Look to chart for Q77) On the facts set forth in the last question above, how would the parties' rights be affected if B published an article fully disclosing the invention in March 2011 in a widely distributed scientific journal? Select the statement below that most accurately describes the situation. (A) The pre-AIA section 102 statutory bar would prevent A from obtaining the patent, but it would not affect other parties' ability to get the patent. (B) The pre-AIA section 102 statutory bar would prevent B from obtaining the patent, but it would not prevent A from getting the patent. (C) The pre-AIA section 102 statutory bar would prevent both inventors from obtaining the patent. (D) The publication of an article in March 2011 would have no impact on anyone's rights, and the owner of the invention (as found in the question above) would still get all patent rights.

Answer (D) is correct. This printed publication appeared less than one year before the patent filing date, which does not result in a statutory bar to patenting this invention. Pre-AIA section 102(b) sets forth various statutory bars under federal patent law: A person shall be entitled to a patent unless ... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

What are three fundamental requirements for a valid design patent? (A) novelty, usefulness, and distinctness (B) novelty, nonobviousness, and distinctness (C) novelty, nonobviousness, and usefulness (D) novelty, nonobviousness, and ornamentality

Answer (D) is correct. Three fundamental requirements for a design patent are novelty, nonobviousness, and ornamentality. Section 171 of the Patent Act provides for a patent as follows: "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a [121/122] patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. 171(a). Ornamentality is thus one fundamental requirement for patenting a design. Section 171(a) refers also to the fact that design patents are "subject to the conditions and requirements of this title," and it is followed by §171(b), which emphasizes that, "The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided." No provision of the Patent Act excepts design patents from the demands of sections 102 and 103, which require novelty and nonobviousness of an invention, respectively. As a result, three fundamental requirements for a design patent are those set forth in option (D) above: novelty, nonobviousness, and ornamentality.

A scriptwriter, D, with connections in the entertainment industry, decides to discuss a script and idea for a television series with another scriptwriter, C, who is a native of the city in which the series would be set. D's planned television series is about several deep-undercover police officers who are all in therapy to deal with the stress of their careers. The main characters of the series discover one another's identities while in a group therapy session—problems ensue. After some conversation, C suggests some locations, stories, and potential plot lines that are in the public domain or the public record, and she introduces D to some retired members of the municipal police force of the city in question. After C refuses payment for her time, D says she will "take care of" C if she gets the series produced. The series is produced and is highly acclaimed, but C is never compensated in any amount. What result when C sues D for misappropriation of ideas? (A) The misappropriation claim is successful because of the promise to "take care of" the plaintiff. (B) The misappropriation claim is successful because D's script became a highly successful television series and the plaintiff is entitled to a share of the profit based on principles of equity. (C) The misappropriation claim fails because any agreement to compensate for ideas must be in writing. (D) The misappropriation claim fails because the plaintiff's contributions are not novel and therefore do not support such a claim.

Answer (D) is correct. To uphold a misappropriation claim, courts will generally require proof of the idea's novelty, disclosure of the idea in confidence, and defendant's use of the idea, and novelty will be fairly strictly judged. See, e.g., Baer v. Chase, 392 F.3d 609 (3d Cir. 2004); Nadel v. Play-by-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000). (This question is based on the facts of Baer v. Chase, where the court rejected a misappropriation claim related to disclosure of ideas to the producer and writer of "The Sopranos.")

Which of the following statements most accurately describes the policy foundations of U.S. trademark law? (A) preventing consumer confusion as to source or affiliation in the marketplace while protecting the goodwill and reputation of trademark owners (B) preventing consumer confusion as to source or affiliation in the marketplace while promoting competition in the marketplace for goods and services (C) protecting the goodwill and reputation of trademark owners while promoting competition in the marketplace for goods and services (D) protecting goodwill and reputation of trademark owners by avoiding consumer confusion about source or affiliation while promoting competition in the marketplace

Answer (D) is correct. Trademark law has three major foundations that must be balanced and weighed: (1) preventing consumer confusion as to source or affiliation; (2) promoting competition in the marketplace; and (3) protecting the goodwill and reputation of trademark owners. This makes (D) the only good answer choice among the four offered, since it combines all three foundations.

Identify the types of moral rights protected under the Visual Artists Rights Act ("VARA"). (A) attribution (B) integrity (C) divulgation (D) both (A) and (B)

Answer (D) is correct. Two types of moral rights are protected under the Visual Artists Rights Act of 1990 ("VARA")—attribution and integrity. Section 106A(a) states as follows: Rights of attribution and integrity. Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art— (1) shall have the right— (A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and (3) subject to the limitations set forth in section 113(d), shall have the right— (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and (B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

Consider an application containing claims effectively filed after March 16, 2013 and compare the following statements related to novelty of inventions. Which statement below provides the most complete and accurate list of requirements for novelty of an invention in such an application? (Note: None of the statements above contains a comprehensive list of the requirements for novelty of an invention in such an application; you are simply asked to select the statement that, as among the choices, contains the most complete and accurate list.) (A) The invention was not patented or described in a printed publication before the date the patent applicant filed the patent application. (B) The invention was not publicly used or sold, and it was not patented or described in a printed publication, in the United States before the date the patent applicant filed the patent application. (C) The invention was not publicly used or sold in the United States, and it was not patented or described in a printed publication anywhere in the world, before the date the patent applicant filed the patent application. (D) The invention was not publicly used or sold, and it was not patented or described in a printed publication, anywhere in the world before the date the patent applicant filed the patent application.

Answer (D) is correct. Under the post-AIA law of novelty, lack of novelty precludes patentability of an invention when the device is publicly used, sold, patented, or described in a printed publication—and any of these takes place anywhere in the world before the date the patent applicant files the patent application. This standard for novelty is set forth in post-AIA section 102(a) of the Patent Act, which states: "A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." 35 U.S.C. §102(a).