Final Exam
Intellectual Property Law Survey
Professors Greenberg & Anderson
GOOD LUCK
QUESTION NO. 1 (33 Points)
This week, just in time for Christmas sales, famous software game company SEGA has introduced a new software game system it calls XXXBox 180, whose main feature is a violent game based on the action motion picture series XXX. The game is extremely violent, featuring the killing of small animals and children. Microsoft, maker of the just-released XBox 360 game system, for which a trademark has been applied for but not yet received, has filed a complaint for trademark infringement and dilution, and is seeking a preliminary injunction to halt the further sale of any of the XXXBox 180 systems. Microsoft is the owner of a previous trademark for the XBox System, its original game software and hardware system. Microsoft’s in-house attorneys have asked you, based on your work in this class, to draft a memo identifying the elements they will need to prove to prevail on their claims at trial and at the injunction hearing, analyzing the merits of their two claims, and outlining what defenses are available to SEGA, and who is likely to prevail and why. Draft the memo Microsoft has requested.
QUESTION NO. 2 (33
Points)
In addition to their trademark and dilution claims arising from the conduct discussed in Question One, Microsoft also wants to bring a copyright infringement case against SEGA for allegedly copying elements of the XBox 360 software program which Microsoft claims are protected by a software copyright they registered before publishing the game.
Microsoft claims that SEGA has copied a basic concept of the Xbox 360 software program, which is the use of progressively difficult levels of skill in mastering the games on the system. Microsoft also claims that the use of certain standard keystrokes to change the positions of characters on the screen, which have been used on all Microsoft-created games, are also protected by copyright, and are infringed by the XXXBox 180. Microsoft also claims that one of the games on the Xbox 360 system, based on the famous story of Robin Hood, has been copied by SEGA and is also an infringement. Microsoft finally claims that its copyright registration protects the names of its characters in its games run on the Xbox 360 system, and on the storyline it created about those characters and their adventures, all of which it claims that SEGA has copied by creating characters with similar names and stories. Microsoft acknowledges that these last elements are not direct copies, but alleges that the names and characters in the SEGA game systems are so similar that they are infringing.
Microsoft has asked you to draft a memo advising them how they should go about proving their copyright infringement claims, and what damages are available to them if they prevail. Microsoft also asks you to analyze what defenses are available to SEGA, and whether those defenses have any merit. Draft the memo they have requested.
QUESTION NO. 3 (34
points)
You must answer the
third question (patent question) in a
separate blue book, labeled “patent question”. If you need more than one blue book to answer
this third question, each blue book you use must be labeled “patent question”.
The patent law question consists
of three subparts set out below. The
fact patterns that precede each subpart are cumulative, that is, all of the
facts that precede each subpart should be considered in answering that
subpart. For your convenience, portions
of the patent law are attached.
Fact pattern—first part.
Marielena Jane- Prats (“MJP”), an
inventor comes to your office in December 2005 and wants your help in bringing
a lawsuit to enforce her patent on a pillow with retractable umbrella
(attached). MJB makes you aware of the following facts:
A. MJP
came up with the idea while sunnying herself on the beach in
B. While
the patent was issued on March 30 2004, school commitments prevented her from
entering into a marketing agreement with Sunny Side Manufanufacturing (“SS”)
for the production of the devices until April 1 2005. SS began to sell the
devices on June 1st 2005 with a retail price of $20. Only 500 of the
devices have been sold to date.
C. MJP
just discovered that Beach Bum Products (“BB” ) has been selling a device that looks identical to figure 4 of
the patent since the summer of 2003 and have sold 100,000 of them by mail order
at 10 dollars each.
D. MJP
has also discovered that Wild Wave Corp (‘WW”) has been offering a device
identical to figure 4 since June 2002 but because they were selling the devices
through beach side resorts at $100 each only 1000 devices were sold.
SubQuestion A. (11
points)
As MJP’s attorney who do you sue and
what damages do you seek for what periods of time? Discuss both Beach Bum
(“BB”) and Wild Wave (“WW”). Give your reasons in each case.
Fact pattern—second part.
A. During
the course of the litigation it is discovered that nearly identical devices were
sold and used on the French Riviera since at least the 1960’s but there is no
evidence they were brought into the
B. During
the course of MJP’s deposition, she testified that in 1998 during a trip to
SubQuestion B. (11 points)
Do these additional facts provide
any concerns whether MJP will prevail at trial?
Are there any additional facts which would be helpful in determining the
likely outcome at trial? Please give
reasons.
Fact pattern—third part.
MJP testifies at her deposition
that she was told by representatives of Sunny Side Manufacturing (“SS “) when
she first met with them on January 15, 2003 to license her invention that they
thought they would make the pillows and fabric portions of the umbrellas out of
SUMBRELLA waterproof fabric (a patented material) and the metal portions out of aluminum in
order to avoid rust from the salt air at beaches. MJP told SS that she thought
that was a good recommendation.
SubQuestion C. (12 points)
What arguments, if any , does this
give
END OF EXAM
TITLE 35 – UNITED STATES CODE
CHAPTER 10—PATENTABILITY OF
INVENTIONS
§ 101 Inventions patentable
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 thereof, subject to the
conditions and requirements of this title
§ 102. Conditions for patentability; novelty and
loss of right to patent.
A person shall be entitled to a
patent unless –
(a) 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, or
(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, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to
be patented, or was the subject of an inventor’s certificate, by the applicant
or his legal representatives or assigns in a foreign country prior to the date
of the application for patent in this country on an application for patent or
inventor’s certificate filed more than twelve months before the filing of the
application in the United States, or
(e) the invention was described in (1) an
application for patent, published under section 122(b), by another filed in the
(f) he did not himself invent the subject matter
sought to be patented, or
(g) . . . before such person’s invention thereof,
the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.
In determining priority of invention under this subsection, there shall
be considered not only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence of one who was
first to conceive and last to reduce to practice, from a time prior to conception
by the other.
§ 112 Specification.
The specification shall contain a
written description of the invention, and of the manner and process of making
and using it, in such full, clear concise, and exact terms as to enable any
person skilled in the art to which it pertains , or with which it is most
nearly connected, to make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention……..
CHAPTER
29— REMEDIES FOR INFRINGEMENT OF
PATENT, AND OTHER
ACTIONS
§ 281. Remedy for infringement of patent.
A patentee shall have remedy by
civil action for infringement of his patent.
§ 282. Presumption of validity; defenses.
A patent shall be presumed
valid. Each claim of a patent (whether
in independent, dependent, or multiple dependent form) shall be presumed valid
independently of the validity of other claims; dependent or multiple dependent
claims shall be presumed valid even though dependent upon an invalid
claim. . . . The burden of establishing invalidity of a
patent or any claim thereof shall rest on the party asserting such
invalidity.
The following shall be defenses in
any action involving the validity or infringement of a patent and shall be
pleaded:
(1) Noninfringement, absence of liability for
infringement or unenforceability,
(2) Invalidity of the patent or any claim in suit
on any ground specified in part II of this title as a condition for
patentability,
(3) Invalidity of the patent or any claim in suit
for failure to comply with any requirement of sections 112 or 251 of this
title,
(4) Any other fact or act made a defense by this
title. . . .
§ 284. Damages.
Upon finding for the claimant the
court shall award the claimant damages adequate to compensate for the
infringement, but in no event less than a reasonable royalty for the use made
of the invention by the infringer, together with interest and costs as fixed by
the court.
When the damages are not found by
a jury, the court shall assess them. In
either event the court may increase the damages up to three times the amount
found or assessed. Increased damages
under this paragraph shall not apply to provisional rights under section 154(d)
of this title.
The court may receive expert
testimony as an aid to the determination of damages or of what royalty would be
reasonable under the circumstances.
§ 285. Attorney fees.
The court in exceptional cases may
award reasonable attorney fees to the prevailing party.
§ 286. Time limitation on damages.
Except as otherwise provided by
law, no recovery shall be had for any infringement committed more than six
years prior to the filing of the complaint or counterclaim for infringement in
the action. . . .
§ 287. Limitation on damages and other remedies;
marking and notice.
(a) Patentees, and persons making, offering for
sale, or selling within the
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