GOLDEN GATE UNIVERSITY
SCHOOL OF LAW
FINAL EXAM
INTELLECTUAL PROPERTY LAW SURVEY
Spring 2001
Professors Greenberg and Morrill
THIS IS AN OPEN BOOK, OPEN MATERIALS EXAM. You may use any notes, books or other materials to assist you in responding to the questions.
There are three (3) essay questions on this exam. Each question is worth thirty-three (33) points. You have three hours to complete this exam. You are not required to spend the entire time working on the exam - the average time for completion is between two and three hours. You should outline your response to each question, before writing the response. I recommend that you spend one third of the time on each question creating your outline, and the remainder of your time writing your answer. For example, if you spend 1 hour per question, devote 20 minutes to the outline, and 40 minutes writing the answer.
Each subpart in each question is equally weighted for grading purposes, so divide your response evenly among the subparts - do not write a full answer for one part and a short answer for another part. Answer each question as fully as you can, citing any appropriate cases, industry standards, and statutes that are relevant. Write your answer in a blue book, or type it on plain, unmarked typing paper. PLACE YOUR EXAM NUMBER ON EACH BLUE BOOK OR TYPED PAGE. At the end of the exam, please turn in your exam books, scratch sheets and exam questions.
DO NOT WRITE ON BOTH SIDES OF THE PAGE. WRITE LEGIBLY OR PRINT IF YOUR HANDWRITING IS DIFFICULT TO READ. WRITE ON EVERY OTHER LINE. If I cannot read your response to a question, your grade will be adversely affected.
QUESTION NO. 1 (33 Points)
You have been contacted for legal advice by Moondance, Inc,, , a San Francisco based production company, which plans to create and market an original opera about the life of international pop star, Madonna. Moondance plans to write this opera, using both original songs written by an outside independent contractor named Bluto, and some of Madonna's songs as well. Moondance plans to buy all rights to Bluto's songs by paying Bluto a flat fee. Moondance does not want to do a written contract with Bluto, because Moondance believes that it will have common law copyright to his songs once it pays for them. Similarly, Moondance will not sign any contract to acquire rights to Madonna's songs, because Moondance believes that the use of those songs is protected by fair use. Moondance also plans to use copies of Madonna's album covers bearing her image to market its new opera. Moondance asks you if it can copyright the opera, and to advise them if there are any legal problems posed by their planned activities. What is your response?
QUESTION NO. 2 (33 Points)
Moondance, Inc., has also asked for your advice on how they can protect their company name, Moondance, which they use in the marketing of their production company services, as well as a line of books, posters, pens, and blankets that they manufacture and sell under the name. The company provides production services and sells these items throughout the United States. What steps should Moondance take to protect the name, and what rights will they have once they have taken those steps?
QUESTION NO. 3 (33 Points)
Your client, Ralph Jones, has invented a method of making a novelty candy called "Brain Food". Based on his information, you file a patent application on December 1, 1999 with the following details: The finished candy product consists of an edible inner core, preferably hard candy in the shape of a human brain, in an ugly gray and red color and on a thin wooden stick. Around the inner core "brain" is an outer layer, preferably shaped like a human head. The product is sold in kit form with completed "brains", various molds shaped like human heads, and ingredients to form the outer layer. The user of the kit puts the head mold around the core "brain", fills up the intervening space with jell powder which will be used to form the outer layer and adds water. Two hours later the product is completed and the mold is removed. The molds can be reused. Jones expects that selling refill kits with additional "brains" and powder to make heads will make him rich.
Claim 1 reads:
A method of making a food product, comprising the steps of:
Inserting a pre-formed edible core into a flexible mold;
Filling the part of said mold not occupied by said core with jell powder;
Adding water in quantity suitable to cause said jell powder to form a solid layer around said edible core;
Waiting for a suitable time while said jell layer forms and takes on the shape of the mold; and
Striping said mold from said completed food product.
During prosecution of Jones' product, the following facts are established:
1. Jones thought up the idea on July 1, 1998, while observing his six-year-old
son's fascination with horror movies.
Are the Jones' claims valid? Why or why not? Please discuss the importance, if any, of
each numbered fact and each prior art reference, as well as any other fact which you
deem
pertinent. Please state any further facts which you would like to know.
2. Jones worked diligently and perfected his method of making "brain food" by September 1, 1998.
3. Jones made prototypes of his invention and showed twelve children attending
his son's birthday party in October 1998, as well as eight of their parents, his
method of making "brain food".
4. One of the parents at the party is an executive in the candy business and
offered during the party to take a license and commercialize the idea. Nothing
ever came of his offer.
5. Jones set up his own company to commercialize the invention. He began
marketing the Brain Food kits in August, 1999. By that time he had realized that
plastic would be more suitable for the sticks, and the kits contained plastic sticks.
6. The following prior art came to light during examination:
a. The Frontal patent, filed on August 1, 1998 and issued on November 1, 1999, disclosing a two layer candy, the outer layer if which is made from
jell.
b. Candy embodying the Frontal invention was sold at a trade show in Toronto, Ontario in September, 1998.
c. The Lobe reference, dated 1991, discloses how to make Popsicles at home, using mold. The Lobe reference suggests that a piece of hard
candy can be placed in the mold before the mixture of water, sugar and flavor
which will form the body of the Popsicle is inserted into the mold.
d. Candy products in the shape of a human head on a stick have been available since at least 1955.
e. Beth Grey claims to have come up with the same idea in 1997 in Arizona. Grey states that
she made a similar product for her children prior to the end of 1997. She did not commercialize her invention, but did call
her mother in England to tell her about it, and sent pictures to her mother.
The pictures cannot be found.
TITLE 35 UNITED STATES CODE
§
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 a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371 (c) of this title before the invention thereof by the applicant for patent, or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) 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.
§ 103. Conditions for patentability; non-obvious subject matter.
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
§ 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.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.