Introduction to Intellectual Property, Fall 2005
University of Akron School of Law
1. E-mail At-home Examination. This is an e-mail, at-home
examination. Subject to the limitations stated below, you are free
to take it at any time and place of your choosing.
2. Limitations. Your completion of this examination will
be subject to the following limitations:
a. Time-spent limitation: three hours. You may work
a total of no more than three hours on this examination (including any
related research and thinking), from the time you begin to read the instructions
until the time you send in your answers. Except under extraordinary
circumstances, such as an intervening family emergency, your work time
should be continuous and uninterrupted. Each question has a suggested
time limit, and the weight of each question for grading is proportional
to the suggested time for answering it.
b. Elapsed-time limitation: 36 hours. Your answers
will be due by midnight, Monday, December 12, 2005, no more than thirty-six
hours after the exam is distributed by e-mail. Late answers will
c. Word limit: 2,000 words. Your answers must total
no more than 2,000 words. If your answers exceed this limit, I will
arbitrarily stop reading after the 2,000th word, and you will lose points
for any and all material thereafter.
If you inadvertently exceed the word limit, it will be to your advantage
to delete less important material and to keep more important material
that is likely to garner you more points. (Most word-processing
programs count words automatically; check "Properties" under "File" or
consult your program's "Help" screens.)
d. No Consultation. During the entire examination interval
(from the time you receive the examination until you submit your answers),
you may not consult with anyone regarding the examination, this course,
the subject matter of this course, or any related case, regulation, or
e. No "canned" answers. These questions are designed
to elicit specific answers in response to specific fact patterns and specific
queries. Nonresponsive material, no matter how correct, cogent,
or even brilliant, will receive no credit whatsoever. I will enforce
this rule even more strictly than usual, in order to discourage anyone
from using "canned" material prepared in anticipation of the questions
to be asked.
f. Honor system. Please include the usual honor-system
oath in your examination. (Your exam number (at the end of your
exam file) and your return e-mail address will constitute your electronic
signature under the Uniform Electronic Transactions Act.)
3. Materials. Because this is an at-home exam, you may
use any written materials that you have on hand, provided they are: (1)
published or (2) prepared by you. You may also use your computer to
browse the Web, including the material posted for this course on the Law
School's Website. However, the questions have been designed so that
the following materials should be sufficient: (1) the casebook, supplement,
and Website for this class (including any materials from it that you have
downloaded, printed out and annotated), (2) any statutory supplement that
you have used for this class (including your own, but no one else's, annotations);
and (3) an outline that you have prepared. I encourage you to make
your outline short, both so it will be usable and so you will have an "overview"
of the course.
4. Strategy for Answering the Questions.
a. Outlines. To the extent intelligible, outlines
will receive partial credit, but you should have time to write complete
b. Additional facts. Please do not assume or make
up additional facts. Although the stated facts may resemble real
situations, all of the stated facts are fictitious (except as noted).
All facts needed to answer each question should appear in the question
itself. If you think you need additional information to answer a
question fully, state what additional information you need, how you would
use it, and how it would affect your conclusions, but please be brief.
Do not waste time answering questions or addressing issues not fairly
presented by the given facts.
c. Organization. Especially in view of the word limit, try
to make every word count. Well-organized answers will receive extra
credit, and poor organization may result in a loss of points.
d. Legal authority. You will receive points for identifying
specific and relevant legal authority, such as a particular statutory
section, subsection, or decision. You may use reasonable abbreviations,
as long as they are clear. For example, you may refer to Qualitex
Co. v. Jacobson Products Co. simply as Qualitex or the "press
e. Fact pattern questions: using IRAC. Most questions
are typical law-school examination questions involving complex fact patterns.
You should answer them by identifying relevant issues and applying
the IRAC formula (issue, rule, analysis, and conclusion). Do not
forget to state a conclusion, as well as your confidence in its certainty,
for each issue and subissue. You should be aware, however, that
a correct conclusion with little analysis will garner you less points
than an incorrect conclusion with thoughtful and thorough analysis.
Try to weave as many specific facts as possible into your analysis, make
and evaluate arguments for both sides, and determine the relative importance
of issues and arguments. Where alternative legal rules exist, you
should state them and indicate which is the majority view, the current
trend, or otherwise the better rule, and why. (Stating why one variant
rule is better than another often involves policy.)
You will not have enough time or space to cover all issues or arguments
in exhaustive detail. Therefore you should focus your discussion
on the issues, rules, and arguments that are most important. Grading
will be based in part on your judgments of relative importance and how
specifically you address the stated facts. Analogies to and distinctions
from precedent, if useful and relevant, will receive extra points.
f. Logical "Trees." Do not neglect to analyze all relevant
branches of a logical tree, even if your analysis suggests that one branch
should be cut off. That is, try to cover all important issues, even
if you think that the resolution of a single issue should control the
result. For example, you should discuss infringement—insofar as
the facts permit—even if you conclude it is doubtful that the plaintiff
has a valid trademark, patent, or copyright. (In other words, pretend
that you are a district court, which might be reversed on any point, rather
than a court of last resort.)
If an issue clearly raised by the facts is easy to resolve, you may say
so without extensive discussion, as long as you say why. You should
not waste time and space elaborating "giveaway" issues. Where the
issues are close or not clearly resolved, however, you should analyze
g. Policy. Please discuss policy only where the question
calls for a discussion of policy, or where discussion of policy is necessary
to resolve a legal issue. You should always discuss the "law" first,
including black letter law, trends, and minority views, before turning
to policy for confirmation or to resolve doubt. Where the resolution
of an issue is unclear, however, you should analyze how applicable policy
affects your conclusion. (The last question here calls for discussion
of policy and should be treated accordingly.)
5. Call of the Question. BE SURE TO READ THE CALL OF
EACH QUESTION CAREFULLY AND TO ANSWER ONLY THE QUESTION(S) ASKED.
6. Submitting your Answers. Detailed instructions for
submitting your answers are at the end of the examination. Please
follow them carefully.
Question 1 (100 Minutes)
You are chief outside counsel for Copycat Novelty Co. (CC).
Your client’s CEO has an unshakable belief in the free market and
the economic power of imitation. Over the last two decades, she
has made a successful business copying others’ gift and novelty items
and marketing the copies. She loves to serve the same market as
novelty innovators by “inventing around” their creations and beating
their prices. She considers her products to be “generic” versions
of more expensive brand-name novelties.
Although your client often has “pushed the envelope” of
intellectual property protection, its CEO is intelligent, cautious, and
heedful of legal advice. So far, you have been able to keep her
and CC out of serious legal trouble by cautionary advice and (on
occasion) effective negotiation of quick settlements. As her
latest saga in her quest for “generic” novelties, CC’s CEO tells you
the following story:
In August 2005, CC was seeking to hire a technician skilled in
injection molding, (i.e., making plastic items of various shapes by
extruding fluid plastic into molds before it hardens). CC
interviewed a man named David Dorsey (DD), who had great experience in
At the time of the interview, DD had been working for
Paramount Novelty Co. (Paramount), the nation’s leading producer and
innovator of plastic novelty items. During the interview, DD
explained that he had had a severe falling out with his boss at
Paramount. He then explained that he had the details of
Paramount’s plans for a revolutionary new novelty product, and he gave
CC’s interviewer a paper copy of an e-mail message from Paramount’s CEO
outlining the plan.
Although addressed to all of Paramount’s staff, the e-mail began
with the salutation “Hi Percy!” Percy was the name of Paramount’s chief
product planner and marketing strategist. Apparently Paramount’s
CEO had inadvertently sent the message to the entire list of
Paramount’s staff, rather than to Percy alone. DD said that the
Paramount’s CEO had sent a second e-mail message asking all but Percy
to erase the first one, but that DD had not done so.
The e-mail described a production and marketing plan for a
“memory boosting” novelty item to be sold to aging Baby Boomers.
This device was to be a hand-held, computer-based device with
search routines to recall miscellaneous bits of information quickly.
It was to be entirely self-contained and enclosed in a grey
plastic package designed in the shape of an elephant. A small
keyboard was to be placed on the elephant’s belly, inside shortened
legs, and a little screen was to appear on the elephant’s elongated and
somewhat flattened head. The idea was that a user could type in
search terms—even inaccurate and misspelled ones—and the computer’s
screen would display alternatives for what the user was trying to
The e-mail from Paramount’s CEO contained a complete
description of this product and a marketing plan. The product was
to be known as the “Elephantuter,”— a contraction of “elephant” and
“computer” also reminiscent of “tutor.” The advertising for it
was to center around the following message:
Stop those “over fifty moments” and remember things again! Our
“ELEPHANTUTER” hand-held memory device will help you recall things like
a youngster. Just type in a guess or a category for a name,
place, or event, and the computer will suggest of a list of
possibilities to prompt your memory. Recall your youth with our
“ELEPHANTUTER” memory aid!”
The e-mail described details of the device’s construction and
programming and a marketing plan, including a tentative retail price of
$150. It also included a draft patent claim, as follows:
Draft Claim 1. A special-purpose computer for the purpose
of prompting human memory comprising: (1) a keyboard or other input
device; (2) a speaker, screen or other output device; (3) memory means
for permanently but changeably recording lists of names, facts and
trivia; (4) at least one pre-programmed such list; (5) means for the
user to input his or her own such list; and (6) programming means to
search said lists using search terms input by the user.
The e-mail closed with the following admonition: “For the time
being, Percy, please keep this project close to your vest; it could be
one of our more profitable products.” The e-mail was dated in
Not only did DD give his interviewer a copy of this e-mail.
He also revealed Paramount’s plans for intellectual property
protection. Although he had no documentary evidence, he had heard
company scuttlebutt that Paramount had filed in the USPTO a utility
patent application and an intent-to-use trademark application for the
mark “ELEPHANTUTER” for “computer-based memory assistance devices.”
DD reported that Paramount had filed the patent application some
time in May 2005 and the application for trademark registration in
early August 2005.
DD was quite eager to compete with his former firm, and he
offered some ideas on how to do so. He also had heard some talk
at CC about how others might“get around” CC’s patent, even if it
issued, and he summarized those ideas to CC’s interviewer.
Your client CC hired DD in late October 2005 and assigned him to
work with CC’s senior product manager. Together, the technician
(DD) and this senior manager developed a plan to make and market a
competing memory-aid device, to be called the “ELEPHANTER.” Like
Paramount’s device, it would be housed in a grey plastic body designed
to look like an elephant, but with shorter than normal legs to
accommodate a keyboard on its belly. Also like Paramount’s
device, it would have a slightly flattened and elongated head for the
To reduce production cost, this device would have no internal
computer processing power but would have to be connected to a
general-purpose computer, such as a PC. It would have only a
keyboard, screen, random-access memory (RAM), and search software
contained in read-only memory (ROM). It also would lack a
pre-programmed list of facts and trivia and so would rely on the user
to “load up” the memory with useful information. Upon connection
to a PC through a “plug and play” connection, the software contained in
the device’s memory would automatically install itself on the PC and
launch, allowing the user to add information to the device’s memory and
later search it despite mistakes and misspellings.
Still greater saving in production cost would come from the form of the
device’s memory. CC’s “ELEPHANTER” memory device would use small
hard disk drives for its memory, rather than the lighter and more
expensive flash memory chips which (according to DD) Paramount planned
to use. By eliminating internal processing power and using
cheaper hard drives, rather than flash memory, CC hoped to be able to
offer its device at a retail price of only $75, thereby substantially
undercutting Paramount’s proposed price as reported by DD.
Furthermore, since CC’s proposed device could be built with
off-the-shelf ships and hardware, CC had every hope of beating
Paramount to market.
Together, DD and CC’s senior product manager proposed a marketing plan based on the following copy:
Stop those “senior moments” and blast your memory back to your
youth! Our “ELEPHANTER” memory device can help you recall forgotten
facts and trivia with ease. Just plug it into any PC and let it
boost your memory. You’ll recall things like a youngster.
Don’t be fooled by more expensive copies; the “ELEPHANTER”
original memory booster has everything you need to boost your memory,
and at an unbeatable price!!!”
After hearing this history, you did a preliminary patent search. Your search revealed only the following “prior art”:
(a) Computer search engines, like LEXIS, that allow full-text and (by keyword) contextual searching of documents;
(b) Portable special-purpose devices that allow lookup of
words in a dictionary or possible translations of English words into
(c) Portable special-purpose devices that include means for
looking up contacts’ names, addresses and telephone numbers from
internally stored lists; and
(d) Computer programs, for use on general-purpose computers,
that allow those computers to perform the functions in (a), (b) and
You also interviewed DD. In that interview, he said he
had had no written agreement with Paramount and had only worked there
for eighteen months.
Your client’s CEO has approved implementation of the plan
developed by DD and CC’s senior product manager. Production and
marketing are to begin next February. So far, however, planning
has been your client’s only expense. CC’s CEO has asked you to
render legal advice quickly, before expenses begin to mount.
Write a memo to your client, analyzing all significant legal
risks (discussed in this course!) in implementing the proposed plan and
hiring DD. Be sure to discuss all legal claims that Paramount
might reasonably bring against CC and/or DD, and all reasonable
defenses to those claims. Finally, recommend a course of action
for CC. Should CC: (1) implement the plan as is; (2) drop the
plan entirely; or (3) implement it with modifications, and if so, what
Question 2 (Forty Minutes)
Patty is a lawyer and David a businessman. They have
been friends for over a decade. When Patty was a second-year law
student, she wrote a paper on the legal aspects of “outsourcing”
white-collar jobs from state and local government. Patty showed
her paper to David, and it sparked David’s interest in outsourcing.
During David’s last year in business school, he had to write a
business plan as his “senior thesis.” He wrote a plan for an
outsourcing firm that would “hire out” legal work from law firms, such
as legal research, to outside lawyers working as independent
In writing his plan, David relied heavily on trends and
statistics he had learned from reading Patty’s paper. His plan
was of course very different in form and substance from a law-review
paper like Patty’s: it was a plan for a business, not an analytical
piece; and it dealt with outsourcing from private law firms, not
government. David’s plan, however, did reproduce two paragraphs
of statistics and one statistical table on outsourcing from Patty’s
paper. Footnotes in David’s plan gave Patty proper credit as the
Patty had encouraged David to focus his required business plan
on outsourcing and had discussed outsourcing legal work with David
extensively. She even reviewed David’s plan and made a few
suggestions for changes, which David made. When submitted as
David’s “senior thesis” in his business school, David’s plan received
an “A” grade and favorable comment from David’s business-school
As David and Patty prepared to join the working world, they
had numerous discussions about actually starting an outsourcing firm
for lawyers. They discussed David serving as CEO and Patty
serving as general counsel, and each promised not to begin such a
business without consulting the other. They put these plans on
hold after graduation, however, when David took a job with a
multinational business consulting firm and Patty became an associate at
a large regional law firm.
After two years, Patty left the big law firm and began looking
for other work. While looking, she reviewed her copy of David’s
outsourcing business plan and updated it. In particular, she
added two pages discussing the impact of the Internet, which David’s
original plan had not discussed at all. She proposed using the
Internet to outsource legal research projects, including patent
searches, to foreign lawyers in English-speaking countries like India.
After making these revisions, Patty showed the revised
business plan to David, who became excited about the prospects for
implementing it. David was so enthused that he began making plans
to quit his consulting job and start the business. Both he and
Patty thought the prospects for such a business bright, and at the time
each believed that no one else had had the same ideas.
Shortly thereafter, Patty got an attractive offer from a
labor-law firm doing cutting edge legal work, including lobbying for
labor-protective legislation. She began to represent clients put
out of work by outsourcing, and soon her attitudes toward outsourcing
changed. She saws participating in an outsourcing business as a
conflict of interest with her primary work, representing her clients.
Moreover, she became legally, politically, and professionally
opposed to outsourcing in any form. She even entered the
“speaking circuit,” lecturing around the country on the evils of
Fired with the idea of the new business, David quit his
consulting job and began working on setting up a legal-outsourcing
business along the lines of the business plan as revised by Patty.
He circulated the plan to a number of venture-capital firms,
seeking money to begin the business. He wrote Patty of his
efforts, and, to his astonishment, she wrote back objecting to use of
“her” plan and the formation of any such business.
David has now quit his consulting job and believes the he can
get venture capital to start the proposed business. Write a memo
to David analyzing what liability he might have to Patty if he
continues to circulate the business plan to seek investment, receives
investment based on the plan, and ultimately starts an
Internet-outsourcing business along lines suggested in the plan.
Is there anything he can do to reduce his legal risk?
Question 3 (Forty Minutes)
“Once the heart of American economic success, intellectual
property (IP) has become a cancer on the body politic. There is
too much IP now, and its scope is too uncertain. Rather than
encouraging innovation, IP now limits our freedom, our liberty, and
“It doesn’t matter what field of IP you consider; the bleak
picture is the same. Take patents, for example. Once they
covered simple, concrete, tangible mechanical and electrical
inventions, and their claims were clear. Now firms can patent
abstractions like computer software, business methods, gene sequences,
and even methods for swallowing pills. Furthermore, patent claims
have become completely elastic. A clever lawyer can stretch them
to cover anything he can get a confused judge or jury to believe.
With a system like this, it is open season on any firm that makes
or markets products or services, because anyone can patent anything,
and what a patent covers is as clear as mud.”
“Copyright and trademark law are not much better.
Supposedly, copyright doesn’t cover ‘ideas.’ But deciding what is
‘idea’ and what is ‘expression’ requires scholastic debate worthy of
medieval scholars. When that debate takes place in a courtroom,
it causes delay and expense sufficient to drag down creative
industries. You never really know what copyright might cover
until the lawyers charge their exorbitant fees and a court rules—often
after years of delay.”
“Similarly, trademark law now covers much more than words: it
covers packaging and the shape of products themselves. The test
for trademark infringement is so general and uncertain as to require
litigation in virtually every case. As for trade secret law, it
is the worst of all. There is no clear rule for what ‘secrets’
can be protected, and the touchstone of misappropriation—improper
means—is entirely in the eye of the beholder.”
“This misbegotten system has turned an engine of innovation
into a mighty brake on progress. Today virtually no business can
exploit the ‘free’ market without someone standing in the way with a
piece of paper or a legal claim, saying ‘This idea is mine!’ Then the
lawyers with their high fees take over direction of the business.
Not even speech, let alone business, is ‘free’ anymore.
After the lawyers take their pound of flesh and the courts
confuse the situation, the poor, benighted business entrepreneur is
left shackled, bound and drained of energy and spirit.”
Write an essay analyzing and/or criticizing this passage. Be
sure to address all aspects of the passage, including: (1) its
underlying assumptions (including the law’s clarity, certainty, and
effect); (2) its implied prediction of consequences; and (3) its
judgments as to what is good policy and what is practically doable.
Your grade will depend not upon your point of view, but upon how
carefully and specifically you support and document your analysis, with
reference to the statutes, cases and statutory and constitutional
policies that we have studied and the underlying trends that they
reveal. The more specific and focused your analysis, the better
your grade will be.
END OF EXAMINATION
INTRODUCTION TO INTELLEECTUAL PROPERTY, FALL 2005
INSTRUCTIONS FOR SUBMITTING YOUR ANSWERS
Please take all of the following steps in submitting your answers,
before the deadline for submission:
1. Include honor-code statement. Make sure that
your honor-code statement appears at the end of your answer file.
(Your examination number and e-mail header will constitute your
signature under UETA.)
2. Include your examination ID number. Type your
examination ID number at the end of your answer file and double-check
it. To avoid accidental breach of anonymity, make sure that
your answer file contains no other identifying information.
3. Spell-check and finalize. Spell-check your answer
file and make any necessary changes. Check world length and
modify as necessary.
4. Save answer file with anonymous ID. Save your
answer file on your hard drive, with your honor-code statement and
examination ID number at the end of the file. When you save
your file, use the file name "2005 Intro to IP Exam" and no other.
(If you use another file name, anonymity may be compromised.)
5. Convert answer file to Rich Text Format. If
necessary, save your answer file again in Rich Text Format. (Use
the "Save As" feature of your Word Processor; then click on the down
arrow to the right of the "File Type" field in the "Save As" dialogue
box and select the "Rich Text Format (RTF)" option. Be sure
to verify that this option appears in the "File Type" field before
you click the "Save" button. Then check to see that a file with
the name "2005 Intro to IP Exam.rtf" and a plain logo appears in your
file folder. You may have to click on "View" : "Details" to
see the .rtf file extension.)
6. Attach your RTF answer file to an e-mail message. Send
your answer file, in .rtf format, as an e-mail attachment to your
message, not as part of the message itself. The "Subject" line
for your e-mail message should be "2005 Intro to IP Exam," and the
text of the message should read "Attached are my answers."
(I will use your e-mail cover messages only to check that everyone
has submitted answers. I will not grade any exam until an assistant
has "anonymized" the answers by separating the attached files from
the e-mail messages and sending the attachments to me with no identifying
information other than the examination ID number included in each
file at the end.)
7. Submit your answers by e-mail. Send your cover
message, with your .rtf answer file attached, to all of the following
(To avoid typing errors, please cut and paste this list into your
e-mail program's "address" or "TO" field; then double-check all addresses
and punctuation. You may wish to prepare an address list in
8. Print and retain a paper copy of your answer file. Immediately
after sending your e-mail message, print out a copy of your answers
and staple the pages together. Then sign and date your answers
and record the exact time of your printout on the title page. (If
there is an e-mail mixup, this paper copy will serve to demonstrate
what you wrote and when, in accordance with the honor system.)
HAVE A HAPPY HOLIDAY SEASON AND A GOOD WINTER BREAK!