LAW 7555-00: INTELLECTUAL PROPERTY
ANSWER KEY TO FINAL EXAMINATION -- Fall 1998
Prof. Tom W. Bell
Key and Outline to Part 1, Question 1
5 points total
- Primary Goal: to prevent consumer confusion. [2]
- Problem with Kimberly: It might allow confusion. [2]
- Solution: A cooling-off period. [1]
Key to Part 1, Question 2
29 points total
- Unfair Competition
- Was LCA 1st to use marks? [1]
- Are LCA and CTC competitors? [2]
- Are LCA and BL competitors? [2]
- Likelihood of Confusion. [3]
- Remedies. [2]
- Lieght's right to his name. [1]
- Zone of geographic expansion. [2]
- Common law or 43(a) will provide remedy. [1]
- Trademark
- No claim until register. See infra. [1]
- What is LCA's mark? First use? See supra. [1]
- Product dilution test. [3]
- Dilution under UC or 43(c). [2]
- Practice-oriented tips
- Use "TM"? [2]
- Register? [5]
- Big foot letter? [1]
Outline to Part 1, Question 2
- Unfair Competition
- Was LCA 1st to use marks? [2]
- Yes for training videos but not for corporate education. [1]
- So it was certainly not first relative to Lieght but it might have been with regard to CTC. [1]
- Are LCA and CTC competitors? [2]
- Not clearly, since slightly different services offered; LCA offers customized videos whereas CTC sells generic ones. [1]
- They arguably also reach different markets, as their articles are priced very differently. [1]
- Are LCA and BL competitors? [2]
- No, not directly. [1]
- but he may be contributorily liable if he knew or had reason to know that CTC was engaging in TM infringement. Hard Rock, quoting Inwood. Joint liability does not look likely, even under the more expansive copyright standard rejected for TM claims, though it deserves consideration since we're addressing the UC claim. Id. [1]
- Likelihood of Confusion [3]
- LCA's mark is suggestive, nondescriptive; distinctive. Confusion will thus be presumed if first use and competition found. [1]
- But LCA did not itself use "Lights"--its customers did. What is the mark LCA wants to protect? [1]
- Anyhow, BL used his name in commerce first and CTC is a successor in interest. [1]
- Remedy [2]
- Injunction possible. [1]
- Damages? If there is bad faith, perhaps so--and note that CTC struck deal with Lieght after acquisition attempt rebuffed. [1]
- Lieght's right to his name. [1]
He has no absolute right to use the mark simply because it is his name. Findlay, Sullivan. [1]
- Zone of geographic expansion [2]
- LCA was in CA first, BL used the marks first, CTC adopted the marks last. [1]
- This is something like The Sample (first user (BL) expands into second user's territory), but also something like Big O (second user (CTC) expands into first user's territory). [1]
- Common law or 43(a) will provide remedy. [1]
- Dilution. See 43(c), infra.
- Trademark
- No claim until register. Infra. [1]
- What is LCA's mark? First use? Supra [1]
- Product dilution test [3]
- Scarves by Vera/McGregor-Doniger (DRIZZLE case) Crucial issue: Whether appreciable number of ordinary prudent purchasers are likely to be misled, confused, or deceived as to the source of the goods. [1 pt.]
- Multi-factor test: [1 pt.]
- strength of mark (strong)
- degree of similarity (high)
- proximity of products (middle)
- likelihood of senior user expanding (high)
- likelihood of confusion (???)
- D's good faith (low)
- quality of D's wares (???)
- sophistication of buyers (high)
- Actual use in context? [1 pt.]
- Dilution under UC or 43(c). [2]
- § 1125(c)(1) whether a mark is distinctive and famous, a court may [not "must"] consider factors such as, but not limited to-- [1 pt.]
- degree of inherent or acquired distinctiveness;
- duration and extent of use;
- duration and extent of advertising;
- geographical extent of trading area;
- channels of trade;
- degree of recognition of the mark and offending mark;
- nature and extent of use of same or similar marks by third parties; and
- whether the mark was registered.
- Sweet's test from Mead Data Central: [1 pt.]
- Similarity of marks. [similar?]
- similarity of products. [similar?]
- sophistication of consumers. [high??]
- predatory intent. [high]
- renown of senior mark. [strong]
- renown of junior mark. [low??]
- Practice-oriented tips
- Use "TM"? [2]
- Done to assert rights under state law when registration not possible or incomplete. [1]
- Useful as "strut and bluff," but not enough. [1]
- Register? [5]
- "Lights, Camera, Action! Inc." is probably suggestive, and so registerable without a showing of secondary meaning. Cf. In re Sun Oil. [1]
- Reasons to register [1]
§1057(b) Cert of regist as pf proof of validity, regist, ownership, and exclusive right to use;
§1072: Regist on principal regist is constructive notice of ownership claim;
§1115(a) Regis on principal regist is prima facie evidence of: validity; regist; ownership; and right to exclusive use;
§1121(a) Dist courts get original jurisdiction w/o regard to amount in controversy or diversity.
§1125(c)(3)Registration provides an absolute defense to an anti-dilution claim;
etc.
- Assessment of costs and risks of failure [1]
- What would you get if register first?
- Would probably all of U.S. minus areas used by BL, at a minimum. [1]
- Might get all of U.S. if PTO finds bad faith by BL/CTC. [1]
- Big foot letter? [1] (& seek buyout to settle!)
Key and Outline of Part 2, Question 3
7 points total
- Ownership--Does (C) in program cover screens? Yes. [1]
- Infringement?
- See § 106--reproduction, deriv. work, display [1]
- Joint Liability? Contributory? Not vicarious? [1]
- No question of copying or unauthorized appropriation.
- Defenses?
- Fair Use? [1]
- License? [1]
- Remedies
- Injunction [1]
- Damages: statutory, atty's fees, actual. [1]
Key and Outline of Part 2, Question 4
8 points total
- Ownership--(C) in compilation of facts? OK, here. [1]
- Infringement?
- See §106--reproduction, deriv. work, display [1]
- Joint Liability? Contributory? Not vicarious? [1]
- No question of copying or unauthorized appropriation.
- Defenses?
- Fair Use? [1]
- License? [1]
- Remedies
- Injunction. [1]
- Damages--no statutory or atty's fees retroactively. Actual OK. [2]
Key and Outline of Part 2, Question 5
15 points total
- Ownership
- Was original a work for hire? See CCNV. [1]
- Was it a joint work? Probably not. [1]
- Was it just Lieght's w/o assignment? [1]
- Does it cover idea? No; only expression. [1]
- Infringement?
- See § 106--reproduction, deriv. work, performance [1]
- Joint Liability as co-owners? Contributory by Hevy? Not vicarious? [1]
- Was there copying? There was no direct access, and only moderate similarities. Expert testimony OK, here. [2]
- Was there unauthorized appropriation? Unclear; maybe only scenes a faire taken. Ask judge or jury--not expert. [2]
- Defenses?
- Fair Use? [1]
- Implied License? [1]
- Remedies
- Injunction. [1]
- No retroactive statutory damages or attorneys' fees--he's too late w/ registration. [1]
- Actual damages OK, and may be worth something.[1]
Key and Outline of Part 3, Question 6
16 points total
- Trade Secret
- Does TS exist? [3]
- Would be valuable for not being known.
- Not readily ascertainable.
- Did she take reasonable efforts to keep it secret? Suburban backyard and neighbor's notice. Compare to DuPont.
- Was there misappropriation? [3]
- Absent new facts about, say trespass, probably not. See DuPont.
- Is Espy deep pockets? No.
- Could Ready-Pop be held liable at any rate? Probably not.
- Value of Trade Secret [2]
- How long would it take to reverse engineer?
- Won't use by Ready-Pop decrease value?
- Invention [8]
- When invented?
- Conception: June '95. [1]
- Reduction to practice. [1]
- Spring '95? No.
- Spring/Summer '96: Still not marketable.
- Spring/Summer '97: OK; patent filed in fall.
- Fall '98: Patent ready.
- Diligence per § 102(c). [1]
Was it abandoned? Probably not.
- Public use or sale greater than one year prior to app. per § 102(b)?
- Via the gardening? Garden was probably not very public and, at any rate, invention was not complete until just before patent application. [1]
- Via public use or sale by Espy/Ready-Pop?
- Maybe they reduced to practice earlier. [1]
- Have they been selling for over a year? [1]
- They may even have a better claim to a patent if they reduced to practice earlier and Ventir was not diligent. § 102(g). [1]
- Remedies: If get patent and litigate successfully, may get injunction or, better, royalties. [1]
- Practice-oriented conclusion [1]
Sensible assessment of balance of risks and benefits.
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Answer Key to IP Final Exam, Fall 1998 - tomwbell@tomwbell.com - v. 06/00