1. You have three (3) hours to complete this exam.

2. THIS IS AN OPEN BOOK, OPEN MATERIALS EXAM. You may use any written notes, books or other materials to assist you in responding to the questions.

3. There are three (3) essay questions on this exam. The first two questions are worth thirty-three (33) points, and the third question is worth thirty-four (34) points. 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 Prof. Greenberg. Answer each question as fully as you can, citing any appropriate cases, industry standards, and statutes that are relevant.

4. 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. It is recommended 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.

5. Please write your responses in the blue books provided to you. Write only on one side of the page and double-space your work, written or typed. Please write legibly. If it is not possible to read your response to a question, your grade will be adversely affected.

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

7. At the conclusion of the exam, return all exam materials to the exam envelope and submit it to the proctor. Do not seal the envelope. Students who do not return all exam materials at the end of the exam may not be graded.

GOOD LUCK!

QUESTION NO. 1 (33 Points)

You represent Jessica Lynch, the 22 year-old, white, blond, attractive female U.S. Army soldier injured (broken foot among other injuries) and held captive in Iraq, who was rescued by U.S. soldiers and who received a heroes welcome upon her return to her native West Virginia. Ms. Lynch is the author of a biography entitled “I Am A Soldier Too: The Jessica Lynch Story”, which details her ordeal. Ms. Lynch has contacted you for assistance in the following situation:

Ms Lynch has discovered that a company called TruStoriez has produced a book entitled “I Am A Pawn Too: The Jennifer Larkin Story: How The Army Pulled One Over”. The title character, Jennifer Larkin, is a white, blond, attractive female U.S. Air Force officer who is injured in a pillow fight with three other female officers, and suffered a broken foot. While she was limping to the mess hall, she is met by an Iraqui family which offers her food and shelter. While in their care, a squad of U.S. soldiers “rescues” her. The Pentagon public relations office decides to make her a hero and creates a fictional battle in which she is captured, and then stages a hero’s return for her, all for the purpose of bolstering U.S. citizens’ support for the war in Iraq. The “Jennifer Larkin” book includes two long sections, totaling 40 pages, which are direct and exact copies from the 200-page Lynch biography. Two-thirds of the copied materials are descriptions of Ms. Lynch’s basic training experiences. Ten of those pages, unknown to anyone at this point, are in fact a direct copy Ms. Lynch made from her U.S. Army basic training manual.

Ms. Lynch wants to sue TruStoriez. Can she? If she can, what causes of action can she assert? What defenses can TruStoriez respond with? What is the likely outcome of the litigation?

QUESTION NO. 2 (33 Points)

Part One

Your assistance has been requested by a start-up home tool, appliance, furnishings and gardening store, which has opened one store in San Francisco, and plans, within the next 23 months, to open several stores in Nevada, Oregon and Washington state. The company name, which appears on all of its stores, is Home Station. The name is presented in a logo style that imitates the stencil lettering used at construction sites. The logo is written in white, with a bright orange background. Home Station’s owners also plan, within two years, to open a first store in London, then a second store in Paris, and a third store in Madrid. Home Station’s president asks you to explain the process the company should go through to obtain protection for its name and logo. What is your response?

Part Two

18 months after beginning the registration process for Home Station, during the public objection period of the registration process, the company receives a letter from attorneys from Home Depot, accusing it of trademark infringement. Home Depot’s attorney notes that its logo is the words “Home Depot”, printed in stencil-style, in white on an orange background. The attorney also points out that the merchandise sold is the same in both stores, and asserts that there is a likelihood of confusion if the Home Station company is allowed to continue to use the name and logo. Home Station asks for your advice. Does the Home Station mark infringe on the Home Depot mark? In addition to trademark infringement, does Home Depot have any other causes of action it can assert, and if so, what are they? Are there any defenses, and if so, what are they? What damages can Home Depot recover if they win a trademark infringement claim? What impact would the loss of the U.S. Home Station mark have on the foreign registrations? Who is likely to prevail in the U.S. trademark litigation?

QUESTION NO. 3 (Patent Question) (34 Points)

Part 1. (60%) On July 1, 1998, Joel was flying from Prague to the United States. One of the passengers who checked in for the flight did not board the aircraft, and due to security regulations that passenger’s checked-on baggage had to be removed before the aircraft could depart. In order to identify the missing passenger’s baggage, all checked-on baggage was removed and spread out on the runway for the passengers who had boarded the aircraft to identify. The process took two hours on a very hot day, during which time Joel conceived the idea of using bar codes to track passenger baggage. When Joel returned to the United States he began work on a method of using bar coded tags to track passenger baggage so that a particular passenger’s baggage could be located at any time.

Joel completed the design for his method by September 1, 1998. Without actually testing his method, Joel applied for a patent on his method of using bar coded tags to track baggage on October 1, 2000. Joel was granted a patent on September 1, 2001.

a. On May 1, 1999, Grant came up with the idea for a method identical to Joel’s. On September 1, 1999 Bonanza Airlines, a small regional carrier, installed equipment to put Grant’s method into use. Bonanza did not pay Grant anything, and the equipment Bonanza installed was provided free by Grant, because Grant wanted to demonstrate his method to the world. Bonanza used Grant’s method until December 1, 2000, when it was discontinued. Grant never applied for a patent.

b. On November 1, 1998, Joel started a new business, called “AirTrackers”, to market his invention. On December 1, 1998, AirTrackers took out an ad in an airline industry magazine stating that Joel’s new tracking method and the equipment needed to carry it out were available for sale. The ad said to call AirTrackers for price quotations, since all systems had to be tailored for the specific application. Joel made his first firm price quote for a system incorporating his new method on November 1, 1999. Joel has since sold his system to three airports.

Please discuss separately how, if at all, facts (a) and (b) above will affect the validity of Joel’s patent should it go into litigation.

Part 2. (40%) For part 2, please assume that Joel’s patent is valid. After 9/11/2001 the United States Department of Transportation (“DOT”) implemented a method of tracking passenger baggage, using equipment made by Bigge Co., that was identical to Joel’s patented method. The DOT’s system was used to help prevent the smuggling of weapons and bombs onto aircraft. The method was completely installed and operational by January 1, 2002. The details of the system were kept secret, and Joel was not aware that the DOT was using his patented method until January 1, 2003. At that time, Joel wrote the DOT and Bigge Co. demanding that he be paid the profits he lost due to the infringement.

Please discuss whether an injunction and/or damages from the DOT or Bigge Co. are available to Joel, and, if damages are available, how they would be calculated.

SELECTED PORTIONS OF
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

(e) The invention was described in–

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent … or

(g) (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.

§ 271. Infringement of patent.

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.

§ 283. Injunction.

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with, the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

§ 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.

§ 285. Attorney fees.

The court in exceptional cases may award reasonable attorney fees to the prevailing party.

§ 287. Limitation on damages and other remedies; marking and notice.

(a) Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

END OF EXAM