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McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
a. copyright the idea for the series
b. copyright the titles for the articles he is thinking of
c. apply for a copyright for the future articles
d. exact confidentiality agreements from any staffers who may find out about the series
e. mail the idea for the series to himself and leave the envelope sealed
31) Which of the following would constitute a breach of copyright when carried out
without permission from the copyright owner?
a. performing a dance routine that someone else had choreographed
b. selling copies of Shakespeare’s Hamlet
c. quoting several lines from an encyclopedia in a college assignment
d. making a copy of a musical tape for yourself that you borrowed from your friend
e. Writing your own version of the Bible but following closely the outline of a published
Bible
32) Marika spends her days in the lab trying to create new and useful inventions. She would
like to protect her monopoly over her inventions but only has time to submit one patent
application at this time. She would like your advice on which of her following creations is
the most likely to be granted a patent in Canada?
a. a specific species of mouse, which after years of investigation, she has identified as the
most appropriate for diabetes research
b. a new method for assembling mouse cages
c. a “one–click” ordering system for buying mouse cages from her website
d. computer software that she designed in order to keep her research notes organized
e. a play she wrote
33) Which of the following statements is TRUE with respect to registration of intellectual
property rights?
a. Registration is mandatory for trademarks but not for copyright.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
b. Registration is mandatory for copyright but not for trademarks.
c. Registration is required for patents but not for copyright.
d. Registration is required for both industrial design and breach of confidence.
e. Registration is required for trade secrets.
34) A distinguishing guise
a. is most relevant to industrial design.
b. is a breach of copyright.
c. refers to the shape of a product.
d. occurs when a manufacturer tries to hide a secret beneath several layers of useless
information.
e. is an award given by a government department for outstanding inventions.
35) A government official has appointed you to a committee that is responsible for
suggesting improvements to the government’s own intellectual property legislation. Which
of the following statements is TRUE?
a. Because industrial designs and breach of confidence are both governed by the traditional
common law rules, there is no legislation in either area.
b. The government that appointed you is located in Ottawa.
c. If the government wants to provide copyright protection to original works created outside
of Canada, it will need to amend the relevant statute.
d. Because intellectual property legislation is intended to create a complete regulatory
scheme, there will be no need to consider any case law.
e. Although there is only one Copyright Act in this country, there are fourteen Patent Acts.
36) Avi is a remarkably creative person. He works in several different media, meaning that
his creations take different forms—sometimes written, sometimes sung, sometimes
sketched, and so on. Avi recently became party to a transaction that involved an advance of
royalties. This most likely means that
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
a. the government has informed Avi that an intellectual property law will be changed as
soon as the relevant statute receives assent from the governor general, who will be acting as
the Queen’s representative.
b. Avi sued another person for the violation of an intellectual property right, and the parties
settled their case out of court.
c. Avi submitted a manuscript to a publishing company in the hope that that company
would pay him for the work.
d. Avi received a sum of money.
e. Avi has paid the government for the right to commercially exploit a work that he did not
create.
37) Henrik successfully sued Acme Inc for violation of his moral rights. Which of the
following statements is most likely to be TRUE?
a. Henrik must still own the work to which the moral rights are attached.
b. Because of the importance of moral rights, Henrik was able to win his case even if he
previously had done everything possible to waive those rights.
c. Acme Inc was held liable even though it had previously purchased copyright in the
relevant work.
d. In addition to violating Henrik’s intellectual property rights, Acme Inc must have acted in
a way that violated the Criminal Code.
e. Henrik must have satisfied the court that he came to the courts with “clean hands” in the
sense that he had not acted as immorally as Acme Inc.
38) Siesta Inc owns and operates a chain of Mexican-food restaurants across Canada. The
restaurants have become wildly popular, largely because each restaurant is carefully
designed and decorated to evoke an authentic Mexican feel. The company is, however,
worried that competitors may begin to emerge and draw away customers. Siesta Inc
therefore wants to protect itself as much as possible under trademark laws. Which of the
following statements is TRUE?
a. Siesta Inc is entitled to register a trademark for the shape and design of its “Sombrero
Salad,” which is a unique dish created by the company’s head chef.
b. Siesta Inc will not enjoy any protection until it registers its trademarks.
c. Siesta Inc can trademark the appearance of physical objects, such as its restaurants, its
logo, and its menus, but it cannot trademark a phrase, such as an advertising slogan.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
d. Although Siesta Inc is entitled to use ® to designate a registered trademark, it cannot use
any symbol to designate an unregistered intellectual property interest.
e. Siesta Inc is entitled to sue for trademark depreciation only if it can prove that customers
became confused and mistakenly thought that restaurants owned by another company were
part of the Siesta chain of restaurants.
39) Stealth Inc designs and manufactures a variety of products. Some of those products are
marketed to ordinary consumers, while others are marketed toward governments. Stealth
Inc is also aware, however, that its products often end up in the hands of criminals and
terrorists. Which of the following statements is TRUE?
a. A patent will not be granted for a new invention unless Stealth Inc can first show that
there is a market demand for such a product.
b. An invention may be granted patent protection even though it is manufacture could be
put to illicit purposes.
c. Because of the requirement of “usefulness,” a patent will not be granted unless an
invention is generally beneficial to the public.
d. Patent protection is available for entirely new inventions but not for mere improvements
to pre-existing products.
e. Anything that is dangerous is not patentable as a matter of public policy.
40) Silken Inc manufactures a wide range of bath products. Its best-selling item is the 1 litre
bottle of “Silky Soak” water softener. A large part of the reason for that success is the
distinctive and easily recognized bottle in which “Silky Soak” has been sold for many
years. Silken Inc recently applied to protect the rights that are connected with the
appearance of the “Silky Soak” bottle. That application was, however, rejected. Which of
the following is not a good reason to reject the application.
a. Silken Inc’s application was based on the colour of the bottle.
b. Silken Inc had successfully applied for the same protection 10 years earlier.
c. The unique design of the bottle is purely functional in nature.
d. Silken Inc’s application was based on the materials used in the bottle.
e. The bottle has a distinctive shape.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
Essay Questions
1) Explain the difference between natural scarcity and artificial scarcity. How can
intellectual property laws affect the scarcity of a particular asset? Illustrate with an
example.
2) Explain what is meant by the following statement: “Intellectual property law is a set of
rules that aims to balance the rights of a creator against the public interest.”
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
3) Explain why fixation is an essential element of any copyright claim. Should the
originality requirement be sufficient? In Gould Estate v Stoddart Publishing Co, a
journalist named Jock Carroll visited with Glenn Gould, who was soon to become a world
famous pianist, but at that point was still a largely unknown artist. As the pair chatted about
a range of topics, Carroll snapped 400 pictures, tape recorded some discussions, and wrote
notes for others. After Gould’s death many years later, Carroll published a book containing
photographs and quotations from the time that the pair spent together. Gould’s estate sued
Carroll for breach of copyright. The court rejected that claim on the ground that the
copyright owner was actually the person taking the notes, and not the person who was
being quoted. Do you think this is a fair way to allocate copyright?
4) Trevor is a struggling, but very talented, musician. Over the years, he has written many
great songs, but has yet to receive any media attention for his good work. Frustrated that he
has never been able to achieve commercial success, he recently began to explore the idea of
selling or licencing his work to other, already established, pop artists. He comes to your
record label seeking to sell certain parts of his copyright. How do you foresee being able to
exploit Trevor’s work? Illustrate how Trevor’s work could be unbundled and exploited.
Does Trevor run any risks in transferring his rights?
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
Answer:
5) Amicus is an artist whose sculptures have made him a household name around the world.
Recently, he has tried exploring different themes, thinking that his religious sculptures were
becoming too common. In a moment of inspiration he had the idea to make a sculpture of
100 doves, symbolizing his hopes for world peace. Upon completion he sold the work to
his hometown in Ontario. Years later, and facing budgetary cuts from the provincial
government, the city decided to auction the work off, dove by dove. Amicus was furious
when he heard the news, stating that the work is a unity and selling it off in pieces ruins its
meaning. He has come to you for advice. Brief Amicus on moral rights and how he may be
able to benefit from them.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
6) Double Burger is a musical sensation in the local rap world of Moosejaw. His shows are
always sold out and he is on the verge of being signed to a record label. Double Burger’s
songs tend to incorporate samples from other songs, mostly cheesy pop songs from the
fifties. His friends tell him that it is okay to use the samples because he does not use the
songs in their entirety, but only short excerpts. He comes to you for a second opinion on
copyright infringement. Advise Double Burger on how to proceed.
Answer:
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
7) Thomas recently patented a process for vacuum-packing T-shirts in cellophane. The
process is such that the T-shirts are compressed into a tight cube, then sealed. The benefits
for this are numerous, since the unique shape of the packaging attracts customers, allows
for creative displays, etc. In addition to the patented process, Thomas is wondering if he
can maintain exclusivity over other aspects of the shirts. Can trademark law help Thomas?
How? Advise Thomas on any steps he ought to consider taking in order to protect himself,
should a competitor try to imitate his product.
8) The Enerstretch is an exercise device whose trademark has been registered, although the
device itself has not been patented. Sales had been going well, until the Enerstretcher came
along. A cheaper copy of the Enerstretch, the Enerstretcher is made with less resilient
springs. As a result, the Enerstretcher was prone to snap, injuring its user. The media ran
several stories about the victims, and as a result of the bad press, the makers of the
Enerstretcher pulled their products off the market. Because of the bad press, the makers of
the Enerstretch quickly saw their sales drop as well. You are a risk manager for Enerstretch.
Does your company have a case? If so, what kind of remedies can they avail themselves of?
Support your answer.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
9) Hearty Meat Sandwiches is a large-sized chain of hamburger and sandwich shops.
Although they have been operating in western Canada for 10 years, they had never
managed to crack the Quebec market. A few years ago, on the advice of their lawyer, they
had registered several trademarks, including their name, their logo (a cartoon heart shape
between two pieces of bread), and their slogan “Smarties eat at Hearty’s.” When Hearty’s
opened their first Quebec store in Montreal last year, they ran a huge advertising campaign,
including bilingual radio spots and ads on television.
When opening day arrived, they were surprised that the number of new customers they
managed to attract was far less than in other, smaller towns. Only later did they discover
that Montrealers appeared to be flocking to another hamburger joint in town, Hardy’s
Burgers, owned and operated since 1997 by Jacob Hardy. Needless to say, the owners of
Hearty’s are miffed. They admit that they probably should have done better research before
the opening, but still think it’s unfair that their ads are working to their competitor’s benefit.
They have come to you for advice regarding any recourse relating to their trademark.
Advise them of any action they may wish to pursue, remedies they may seek, and the
benefits and detriments of pursuing their case.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
10) Knock-offs and trademark depreciations are two examples of trademark infringement.
How do the two differ? Provide an example of each.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
11) A group of engineering students set themselves the task of creating a motor powerful
enough to run a car using solar power rather than gasoline. Two years into the project the
students managed to create a prototype vehicle that was functional and environmentally
friendly. The media was called, and several newspapers ran stories about the students, and
how the students were going to try to sell their idea to a car manufacturer. Soon after, the
students received a letter from an oil company informing them that it already owned the
patent for the solar motor and that the students’ motor, if sold, would be infringing the oil
company’s patent. Is the oil company correct? It turns out that the oil company held the
patent but was not marketing it for fear of losing profits on its oil sales. What does this
situation say about how patent law balances private rights with the public good?
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
12) Explain what is meant by the novelty requirement in patent law. Is it sufficient for a
product to be the first one on the market?
13) Carlos, a baseball fanatic, has spent most of his adult life in a workshop, trying to
invent a better baseball bat. Finally, after having spent many years and most of his savings,
Carlos succeeded in creating a bat out of an aluminum alloy that results in sending the
baseball further than if the ball was hit with a standard bat. Ecstatic, Carlos decides to hire a
patent agent to help him secure a patent. But he contacts you for advice about his options
for exploiting his patent, and to discuss the risks and benefits of each potential avenue.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
14) Explain the meaning of the following statement: “Industrial designs cannot be
registered for designs that are purely functional in nature.” Using a running shoe as an
example, describe an element that can be registered as an industrial design and an element
that cannot.
McInnes/Kerr/VanDuzer: Managing the Law: The Legal Aspects of Doing Business, Fourth Edition
Chapter 18: Intellectual Property
15) Softwear Inc is a company that develops “smart clothes”—clothes that change in
temperature depending on a number of factors such as the weather and the amount of
activity the wearer is engaging in. Although Softwear owns several patents from which it
generates much of its revenue, it is constantly developing new products. Recently, due to a
downturn in the economy, Softwear has had to lay off many of its workers. Its executives
are worried about disgruntled workers using the knowledge they have of products still in
development at Softwear to obtain jobs with Softwear’s competitors. Suggest an avenue that
Softwear may wish to pursue in order to protect its information-based assets.
