Prof. Tom W. Bell

Saturday, December 16, 1995
1:00 p.m. - 4:00 p.m.

This exam consists of three questions. You have three hours in which to outline and write your answers. The first question counts for 40% of your total grade for this exam; the second also counts for 40%; the third counts for 20%. I suggest that you allocate your time accordingly (roughly an hour and ten minutes apiece for each of the first two questions and 40 minutes for the last).

I strongly suggest that before you begin writing your answers you 1) read the question carefully; 2) think about exactly which issues you need to address; and 3) outline your answer. Good organization and good analysis almost always go hand-in-hand.

Use as many exam booklets as you need. Start your answer to each question in a new booklet and number the booklets so that I can easily follow their intended sequence. Please write on one side only of each page.For your benefit and my eyesight, please write as legibly as possible.This is an open book exam. You may use your casebook, statutory supplement, any material that I handed out in class, and any notes that you or your study group prepared. You may not use other materials, such as nutshells or commercial outlines.

If you have any procedural questions, please direct them to Jennifer Patterson, in the registrar's office. She will know how to reach me immediately.

I've got a very successful friend to whom people often say, "Gosh, you're lucky." She always replies, "The harder I work, the luckier I get." May you, too, achieve the success that your hard work merits.

The exam begins on the next page.

Question 1

40% of exam's total grade
(suggested time: approximately 70 minutes)

Your client, Dominique ("Nick") O. Tean, seeks advice about how her company, Tean Inc. (TI), can best protect itself in marketing its newest product. She describes the situation thusly:

We plan a nationwide campaign to launch a new line of cigarettes: "Grit" cigarettes. We want to adopt the slogan, "Rugged smokes for rugged folks." As part of our marketing strategy, we also want to use an unusual package. We plan to sell Grit cigarettes in packs that have rough surfaces -- something like medium-grade sandpaper.

Giving the box a really rough exterior will both reinforce the product's name, "Grit," and make the pack stand out from competitors' smooth, glossy cigarette packs. I can even see us working the box's non-slip surface into our ad campaign, showing a construction worker easily holding onto his Grit pack as he bumps along in his bulldozer.

Tell me what sort of nationwide protection you can get for these three marketing ideas -- the name, the slogan, and the box -- under trademark and unfair competition law. Keep in mind that we plan a big campaign -- we aim to make our product as widespread and famous as Camel or Marlboro cigarettes (though we plan to price Grit more cheaply). Include a discussion about that "federal register" thing you always run on about, as well as any problems arising from others using similar marks.

You have already searched for prior uses or registrations, and uncovered only one that is relevant: "True Grit" beer, a local brew sold since 1965 throughout New York state, and there alone, by Brewski Corp. (BC). BC has not registered "True Grit" at the state or federal level. It sells True Grit through convenience stores and bars, at the low end of the price range. BC takes great pride in its regional roots, and has made "True Grit" quite well known in its target market: blue-collar workers and sports fans of New York teams. Your research indicates that these same consumers smoke cigarettes at twice the national average, and often while drinking beer. The market share held by True Grit has held steady for the last 20 years.M

Analyze prospects of TI obtaining and defending rights to each of the three marketing ideas in proceedings at the Patent and Trademark Office. Also discuss the rights and remedies of TI and BC if TI proceeds to market and sell its product as planned. Ignore patent or copyright issues.

Question 2

40% of exam's total grade
(suggested time: approximately 70 minutes)

Dvorak writes soundtracks for films. Qwerty writes screenplays. They sometimes combine their products to create soundtrack-plus-screenplay packages. They pitch these packages to film producers, who sometimes buy the packages and sometimes buy the soundtracks or the screenplays separately.

One evening last month, working alone in her studio on a new project, Dvorak struggled to find a melody that would fit the melancholy and dignity of Qwerty's latest heroine. Right then, through an open window, she heard a mourning dove sing. Inspired, Dvorak quickly re-worked the dove's song into a fitting melody. Before she had even gone to the trouble of writing her composition down, she excitedly called Qwerty. Getting Qwerty's answering machine, Dvorak turned on her speaker phone, gave a short introduction, and played the new melody. Satisfied with her day's work, Qwerty left her studio immediately after hanging up the phone.

It turns out that Qwerty did not answer the phone because his wife, Sue, was hosting a party. Sue was celebrating having gotten Disney to pay a huge settlement to her clients, representatives of the estate of the original Mr. Potato Head. A good many of the guests -- those with the big heads, short legs, and variegated features -- came from the Potato Head family. Others represented the usual crop of well-connected Hollywood executives.

Qwerty did not know many of the guests, nor did he care to. He considered himself, as an auteur, above such schmoozing. Two drinks into the evening, Qwerty started arguing with the executives about how the film industry steals artists' labors. Four drinks in, he started offering tater tots to horrified members of the Potato Head clan. At six drinks, Dvorak's call came in.

Qwerty knew better than to try to work in his condition, so he just listened in as the machine began recording Dvorak's call. "Now this," he shouted in a slurred voice to his wife's guests, "represents the sort of genius that makes losers and tubers like you rich!" As Dvorak finished her short introduction, Qwerty turned up the answering machine's speaker and let Dvorak's live performance wash over the hushed crowd.

Despite his poor manners, Qwerty had made his point. The guests filtered out whistling Dvorak's tune and marveling at art's power to save a party from utter disaster. But though Sue forgave Qwerty, Dvorak got very angry when she learned that he had played her call without her permission. "At the same time that I thought I was leaving a private message for you," she explained, "you were broadcasting my performance to a bunch of strangers!"

Furthermore, not long after Dvorak unknowingly performed for Sue's guests, a competing composer of film scores, Shift, sold a studio a tune that sounded rather similar to Dvorak's. Shift was not at the party and disavows any exposure to Dvorak's melody.

Dvorak has asked your firm to advise her about her possible copyright claims against Qwerty and Shift. Write a memo doing so.

Question 3

20% of exam's total grade
(suggested time: approximately 40 minutes)

Cyclone Fan Corporation (Cyclone) has just filed suit against your client, Blaster Fans, Inc. (Blaster). Your supervising partner gives you the facts and your assignment:

In 1977, plaintiff Cyclone obtained a utility patent on a particular sort of grill for its household fans. This grill has vanes that spiral outward from its center to its edge. Cyclone claimed in its patent specification that the grill improves a fan's performance by directing and concentrating airflow. The patent expired in 1994. Soon thereafter our client, Blaster, copied the grill design and incorporated it into its own fans.

Cyclone has sued Blaster under § 43(a) of the Lanham Act, claiming that Blaster's use of the grill confuses consumers. We cannot plausibly dispute that consumers have come to associate the spiral grill with one source -- Cyclone -- and that they sometimes purchase Blaster fans under the mistaken assumption that the fans come from the same source as before. Nor do I see any hope for arguments based on the distinctiveness or functionality of Cyclone's design.

I think we have just one defense: Granting Cyclone rights under § 43(a) would contravene federal policy and violate the Constitution. Write me a memo filling out and analyzing this defense, taking care to note possible counter-arguments.

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Copyright and Trademark Law Final Exam, Fall 1995 - - v. 06/00