INTELLECTUAL PROPERTY LAW SURVEY
Professor Greenberg and Professor Morrill
SPRING SEMESTER 2003

Instructions

1. 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. We 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.

2. 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.

3. There are three (3) essay questions on this exam.

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, PLACE THE WORDS “PATENT QUESTION” prominently on the blue book cover. 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. Answer each question as fully as you can, citing any appropriate cases, industry standards, and statutes that are relevant.

5. DO NOT WRITE ON BOTH SIDES OF THE PAGE OF THE BLUE BOOK(S). WRITE LEGIBLY OR PRINT IF YOUR HANDWRITING IS DIFFICULT TO READ. If we cannot read your response to a question, your grade will be adversely affected. Be sure to write your exam number on your blue books and on the exam question. Turn in all questions, scratch paper and blue books after the conclusion of the exam.

6. Write your exam number on your exam envelope, at the top of this exam 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.


Question One (32 points)

You have been contacted by pop singer Mariah Carey, who loves to cook. Ms. Carey, who has recently moved from New York to Los Angeles, has developed a secret formula for a line of salad dressings. She wants to market the salad dressings under the name Mariah’s Own, and plans to use her image on the salad dressing bottles and other packaging materials. She is also seeking your advice regarding a San Francisco-based cigarette company, Joe’s Smokes, which, without her permission, has produced and is selling a line of cigarettes called Mariah’s Smokin’, and which features an unauthorized semi-nude photo of her on its packaging.

Ms. Carey asks your advice on the following points:

How can she protect the name, Mariah’s Own, that she wants to use to market her salad dressing, both in the United States and in Europe?

How can she protect her secret formula for the salad dressing ingredients? In particular, how can she prevent her employees from taking the formula to competitors when they leave her employment?

What rights does she have to stop Joe’s Smokes from using her name and image on their cigarettes?

What is your advice to Ms. Carey?


Question Two (33 points)

You represent Golem Communications, a computer software company which has come up with a new idea for an online telephone directory. The directory, which Golem calls the See Directory, provides users with the telephone number, photograph, and biographical information of each person listed on the directory. The directory is searchable, and includes humorous comments by the person’s friends about each person listed. Golem presented this idea to Southern Bell Company (SBC) which said they weren’t interested. Now SBC has just published a similar directory, called PeopletoPeople, which includes all of the elements Golem presented to SBC, as well as the same text material at the beginning of the directory, which contained original stories and graphics designed by Golem.

Golem asks you whether an action can be brought against SBC, and what the potential causes of action would be. Golem also asks whether any pre-trial remedies are available, as well as what damages it could seek, and whether it is likely to prevail. What is your advice to Golem?


Question Three – Patent Question (35 points)

35 USC §§ 102, 271, 281-282 and 284 are attached for your convenience.
(NOTE: These are not attached here due to size constraints)

Please note that each sub-question is to be answered only with all of the information that comes before the sub-question, including information contained in all prior sub-questions.

You are a lawyer representing Talking Toys, Inc. Talking Toys makes toys with audio features, including a puzzle called the Precious Talking Puzzle, or PTP. The PTP looks like a conventional puzzle for young children with about 20 large wooden pieces that fit together in a tray. The novelty about the PTP is that each piece has an embedded transmitter chip that senses the location and orientation of the puzzle piece in the tray and transmits that information to a processor. The processor causes a speaker embedded in the tray to broadcast hints and suggestions to the child when the piece is put in the wrong place, such as “try turning me the other way”, or “do I belong in the upper left corner”? The PTP has been a big hit, generating over $20,000,000 in gross sales.

On May 1, 2003, the CEO of Talking Toys came to you with a letter he received that morning from Toxic Sludge, Inc. Toxic Sludge sent with its letter a copy of its U.S. Patent No. 6,075,111 (‘111 patent), issued on April 30, 2003, and said in the letter “We at Toxic Sludge believe that Talking Toys infringes our ‘111 patent. We would be happy to license the ‘111 patent at a royalty of 50% of your gross sales.”

Sub-question A (5 points): What should Talking Toys do in light of the letter?

The problem addressed by the ‘111 patent is how to fit together the parts of a pollution control system being installed in the sludge discharge of an industrial plant without shutting the plant down. The parts cannot be visually aligned, because there is no visibility through the sludge. The ‘111 patent describes a method of fitting the parts of the system together using transmitter chips embedded in each part of the system. According to the ‘111 patent, these transmitter chips transmit the orientation and location of each part to a processor. The processor sends a voice message to a crane operator explaining how to move each piece into place in order to build the system.

Sub-question B (10 points). Does the PTP puzzle infringe claim 1? (For purposes of this sub-question, please ignore any issues as to validity of the ‘111 patent.)

The CEO of Talking Toys asks you if the Toxic Sludge patent is valid. He tells you that he has learned of a patent owned by Playthings, Inc. that claims a toy essentially identical to the PTP. The Playthings patent was applied for on June 13, 2001, and was never published until it issued on December 1, 2002. You note that the ‘111 patent was applied for on January 15, 2001. The CEO also tells you that Talking Toys has been selling the PTP since January 1, 2000.

Sub-question C (10 points). In view of all of the facts above, is the ‘111 patent valid?

The CEO of Talking Toys asks what exposure for injunction and for damages Talking Toys will have if Toxic Sludge brings and wins a lawsuit for infringement of the ‘111 patent by the PTP. He is especially worried that Toxic Sludge, if it wins, could obtain all of the profits made by Talking Toys on the PTP. The markup on the PTP is large, and the profits have been enormous.

Sub-question D (10 points). Please address the CEO’s worry and describe Talking Toys’ exposure.


End of Exam