INTELLECTUAL PROPERTY LAW SURVEY
FINAL EXAMINATION
PROFESSORS GREENBERG & MORRILL
FALL 2002
Tuesday, December 17

1. This is an open book, open materials exam. You may use any notes, books or other written materials to assist you in responding to the questions.

2. You have three (3) 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 1.0 hour per question, devote 20 minutes to the outline, and 40 minutes writing the answer.

3. There are three (3) essay questions on this exam. The first two questions are worth 33 points, and the third question is worth 34 points.

4. The third question pertains to patent law. This question will be graded by Adjunct Professor Morrill. You must answer the third (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 remainder of the exam will be graded by Professor Greenberg.

5. Answer each question as fully as you can, citing any appropriate cases, industry standards, and statutes that are relevant.

6. Do not write on both sides of the page. Write legibly or print if your handwriting is difficult to read. If I cannot read your response to a question, your grade will be adversely affected.

7. Write your exam number on your exam envelope, all used blue books, and at the top of this exam question packet. Do not use your name, student ID number, or Social Security Number on any exam materials.

8. At the conclusion of the exam, return all test materials, including blue books, scratch paper, and this exam packet to the envelope and submit it to the proctor.


QUESTION NO. 1 (33 Points)

Having completed law school and passed the California Bar, you have been approached by a client who asks you to help protect the new name for the client's new product, a suede leather jacket for men and women which, through the use of new technology known as nanotechnology, contains tiny robots woven into the fabric which self-clean and repel all water and dirt. The client is a California company called EVERWEAR, and it has suggested three different names for its jacket product line, which will be sold worldwide. The names are EVERWEARSUEDE, TECJACKETS, and PIXELJAX. Your client asks you the following questions:

1. What are the strengths and weakness of each of these prospective marks?

2. Is it likely that any of these names will be rejected as a trademark? If so, which one and why?

3. How can EVERWEAR establish worldwide protection for its chosen mark?

4. If, after obtaining a federal trademark in their jacket name, EVERWEAR discovers a California competitor is marketing a jacket line with a confusingly similar name, what remedies are available to EVERWEAR? In what judicial forum would any action be filed? Is there more than one forum available to EVERWEAR? Explain your response in detail

QUESTION NO. 2 (33 Points)

On January 1979, Chad, an employee of your client, FRESH INQUE, Inc., a California corporation which makes ink pens, wrote an original story while on the job. His story dealt with the life experiences, both happy and sad, of a door-to-door ink pen salesman (which in fact was Chad's job). FRESH INQUE claimed ownership of the story and went on to publish it to great success, as well as to license rights to Paramount Pictures to make a feature motion picture about it, and to Fox Television to create a weekly television series called HANGIN' WITH CHAD.

Recently, FRESH INQUE discovered that for the past six months, a group of San Francisco State University students, enrolled in that school's Media program, have been broadcasting on a nonprofit public access television station, a weekly program called BANGIN' ON BRAD, about a young door-to-door pencil salesman whose friends are always pulling practical jokes and stunts on him. In that program, the SFSU students also run film clips of HANGIN' WITH CHAD episodes on the television in Brad's apartment.

To add to FRESH INQUE's problems, it has just received notice that Chad is quitting the company, and that he has demanded that in the year 2014, all rights to his original story be returned to him, pursuant to the right of termination included in Copyright law.

FRESH INQUE asks you the following questions:


QUESTION NO. 3 Patent Question (34 Points)
Answer in a separate blue book
(Please note that 35 U.S.C. §§ 102, 103, 112, 271 and 281-287 are needed)

Electrical/mechanical playing card shufflers are used in casinos around the world to insure that players are dealt random card hands and speed up play. These shufflers do the card shuffling which the dealer would otherwise do. In the prior art, the dealer would take a shuffled deck of cards from the card shuffler and deal hands to each player from the top of the deck.

Random, Inc. owns U.S. Patent No. 5,555,555, which covers a new card shuffler called the "Double Random". The Double Random shuffler first mechanically shuffles the cards, just as prior art card shufflers do. After making the shuffle, the "Double Random" shuffler makes two further random sorts of the cards. In the first random sort, the cards are randomly assigned into packets, or groups. These packets of cards are held in separate compartments, which are vertically stacked in a "tower" in the card shuffler. In the second random sort, cards are randomly drawn from one or another of the packets to form each player's hand. Thus, when the Double Random shuffler is used the dealer does not deal hands, but simply hands to each player a hand formed by the Double Random shuffler. As a result, play is sped up more and randomness of cards is insured.

The Double Random has been a great hit in the casino market. The shufflers sell for about $3,000 each, and profit margins have been very large, 50% of sales, because Random, Inc. at present has no competition. Random, Inc.'s sales are only limited by its production capacity, which is 2,000 shufflers per year.

Your client, Chicago Cards, would like to enter this lucrative market. Chicago Cards believes it can sell 500 shufflers per year in the United States and another 1,000 shufflers per year abroad. Chicago Cards will manufacture its shufflers at its Nevada facility. Chicago Cards has developed a shuffler for double randomizing cards, which operates in the same way as the Double Random shuffler, except that the packets are held in compartments in a drum, which is rotated when cards are inserted or taken out. The Chicago Cards shuffler thus has no "tower", but does have a rotating drum, which is not present in the Double Random shuffler.

The `555 patent has one claim, which describes the Double Random card shuffler and which reads as follows:

Question 3A (11 points).
Chicago Cards comes to you for advice. You advise Chicago Cards to obtain a written opinion from competent patent counsel as to whether its card shuffler infringes the `555 patent. Chicago Cards declines to get such a written opinion, but asks you for a verbal opinion as to its chances of infringing the `555 patent if it sells its shuffler. What is your advice to Chicago Cards? Are there any other documents you would like to look at in giving your advice, and why?

Question 3B (11 points).
Chicago Cards enters the market with its shufflers, and, as its VP of Sales reports to you, soon "eats Random's lunch". Chicago Cards sells 1,000 shufflers in its first year of business, and Random, Inc. looses 500 sales, being able to sell only 1,500 shufflers. At the end of the first year of Chicago Cards's entry into the market, Random, Inc. sues for infringement of the `555 patent. At this point the president of Chicago Cards gets very nervous and asks you what remedies Random, Inc. will be entitled to if it wins the lawsuit. What is your answer to his question? Please note any other facts you would like to know in your answer.

Question 3C (12 points).
You are retained as defense counsel in the lawsuit and hire a prior art searcher in Washington, D.C. to find prior art to invalidate the `555 patent. The searcher finds a 38 year old patent issued to Smith which discloses a shuffler which is very similar to the Double Random shuffler, except that Smith uses punch cards, not a computer, to randomize the first and second sorts. It is also common knowledge in the industry that every card shuffler made in the last 10 years has been operated by a computer capable of generating random selection of cards.

When the prior art searcher gives you the Smith patent she says, "Funny thing, but I found this same reference about three years ago for a fella who worked for a company called Random, Inc. They were trying to get a patent on a card shuffler."

How will you use the Smith reference and the information verbally told you by the art searcher in your defense of Chicago Cards? What else would you like to know to help you use this information?


END OF EXAM QUESTIONS