C H A P T E R 1 1
Intellectual Property
TRUE-FALSE QUESTIONS
1. After a patent expires, the invention is dedicated to the public.
2. A copyright is a government-granted right to exclude others from making, using, or selling an
invention.
3. Intellectual property is any product or result of a mental process that is given legal protection against
unauthorized use.
4. Copyright protection does not extend to derivative works.
5. A patent holder must personally make use of the invention.
6. The patent practice of other countries is often different from that of the U.S.
7. An invention is “novel” if it is explained in book format.
8. A trademark does not necessarily reveal the product’s manufacturer.
9. The packaging or dressing of a product may be protected under the trademark laws as trade dress.
10. Trade secrets are protected for an indefinite time.
11. The U.S. Supreme Court ruled that living organisms can be patented if they are human-made.
12. As a matter of law, a combination of two inventions cannot be considered nonobvious.
13. An invention will be denied patent protection if its novelty merely represents an obvious
development over existing technology, also referred to as prior art.
14. Constructive abandonment of a trademark can occur through the trademark lapsing into
genericism.
15. Once the Patent and Trademark Office issues a patent, a court may not find it invalid.
16. Terms that were once enforceable trademarks may become generic and thereby not protected.
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17. Service marks are a form of trademarks.
18. Susan may get a patent on the new type of rose she developed through asexual reproduction.
19. The Uniform Trade Secrets Act is a federal law.
20. Arbitrary marks are real words whose ordinary meaning has something to do with the color or shape
of the trademarked product.
MULTIPLE-CHOICE QUESTIONS
1. Which of the following are defenses to patent-infringement claims?
A. noninfringement, invalidity of the patent, misuse of the patent, and innocent infringement
B. noninfringement, invalidity of the patent, fair use, and innocent infringement
C. noninfringement, fair use, misuse of the patent, and innocent infringement
D. Fair use, misuse of the patent, innocent infringement, and illegality of the patent
2. Which of the following is true regarding remedies for patent infringement?
A. The patent holder may seek preliminary and permanent injunctive relief and damages, as well as
court costs and attorneys’ fees.
B. The patent holder may seek preliminary and permanent injunctive relief and damages, as well as
court costs, but attorneys’ fees are unavailable.
C. The patent holder may seek permanent injunctive relief and damages, as well as court costs and
attorneys’ fees, but preliminary injunctive relief is unavailable.
D. The patent holder may seek damages, as well as court costs and attorneys’ fees, but injunctive
relief is unavailable.
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3. Which of the following is not a type of U.S. patent?
A. Plant patent
B. Design patent
C. Service patent
D. Utility patent
4. Which of the following was the result in Bilski v. Kappos, the case in the text involving whether a
business process explaining how buyers and sellers of commodities in the energy market can use
hedging to protect against price fluctuations is patentable?
A. The court ruled that the claimed invention was a patent-eligible process.
B. The court ruled that the claimed invention was not a patent-eligible process because it was an
abstract idea.
C. The court ruled that the claimed invention was not a patent-eligible process because under
federal patent law, no business methods may be the subject of patents.
D. The court ruled that more information was needed regarding expected profits before a
determination could be made as to patentability.
5. A _________ mark is a coined term having no prior meaning until used as a trademark in connection
with a particular product.
A. arbitrary
B. suggestive
C. descriptive
D. fanciful
6. A _________ mark is a real word whose ordinary meaning has nothing to do with a trademarked
product.
A. arbitrary
B. suggestive
C. descriptive
D. fanciful
7. Which of the following is true regarding patent misuse?
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A. When a patent misuse occurs, the offender permanently loses the right to patent protection on the
patent at issue.
B. Requiring a licensee to purchase nonpatentable products as a condition to obtaining a license for
patented products is patent misuse.
C. The patent holder is barred from recovering for any infringement of its patent during the period
of misuse.
D. There is no such concept as patent misuse in the U.S.
8. What type of efficiency exists when competition among individual producers drives all but the
lowest-cost producers of goods or services out of the market?
A. Allocative
B. Economic
C. Strategic
D. Productive
9. The federal trademark act is known as the _________ Act.
A. Trademark
B. Signal
C. Smith
D. Lanham
10. What did the court rule in the case in which Holiday Inn claimed that by using a similar number a
travel agency infringed Holiday Inns’ trademark in its vanity toll-free telephone number?
A. That there was no potential for confusion and that, therefore, there was no trademark violation.
B. That there was a trademark violation and that damages were available.
C. That although there was a potential for confusion, there was no trademark violation.
D. That there was a trademark violation but that only injunctive relief was available.
11. The defense of _________ is available when a trademark user truthfully uses a competitor’s mark to
identify the competitor’s product for the user’s own purposes.
A. nominative use
B. competitive use
C. genericity
D. fair use
12. What are the four basic types of intellectual property?
A. Patents, copyrights, trademarks, and trade secrets
B. Patents, copyrights, certifications, and trademarks
C. Copyrights, certifications, trademarks, and original works
D. Inventions, certifications, original works, and patents
13. The practice of _________ occurs when an individual registers a famous trademark as an Internet
domain name and then offer to sell the domain name to the trademark owner for a ransom.
A . Internet trademark abuse
B. domain misuse
C. domain / trademark harassment
D. cybersquatting
14. Under the ________ use doctrine, under certain circumstances, a person may infringe the copyright
owner’s exclusive rights without liability in the course of such activities as news reporting,
education, scholarship, or research.
A. fair
B. education
C. new
D. critical
15. An example of a fanciful trademark is
A. Kodak
B. Shell
C. Tide
D. Camel
16. The duration of a copyright granted to a known individual, not a work done for hire, will be
A. the life of the author plus 100 years.
B. the life of the author plus 70 years.
C. 75 years after the first publication.
D. 100 years after the creation of the work.
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17. The term _____ is used to describe a nonpracticing entity that purchases one or more patents with
the intent to enforce the patents against infringers, rather than to manufacture a patented product or
supply a patented service.
A. patent troll
B. illegal user
C. patent hoarder
D. patent stasher
18. Which of the following is an example of an arbitrary trademark?
A. Camel
B. Kodak
C. Exxon
D. Clorox
19. A design dictated by function may be protected by a(n) ________ patent.
A. equivalents
B. design
C. utility
D. useful articles
20. The _________ doctrine provides that copyright protection does not extend to the useful application
of an idea.
A. useful article
B. utility
C. equivalents
D. design
21. Which of the following is not a part of a patent application?
A. The specifications.
B. The claims.
C. The drawings.
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D. The declaration of prior art.
22. When may a defendant be held liable for vicarious copyright liability?
A. So long as it can be shown that the defendant has the right and ability to control the infringer’s
acts.
B. So long as it can be shown that the defendant receives a direct financial benefit from the
infringement.
C. When he defendant has the right and ability to control the infringer’s acts and receives a direct
financial benefit from the infringement.
D. Never because vicarious copyright liability is not recognized.
23. A ______ is used in conjunction with services.
A. certification mark
B. trademark
C. service mark
D. trade name
24. Which of the following is considered in determining whether use of copyrighted material constitutes
fair use?
A. Only the amount of the work used.
B. (1) The amount of the work used, and (2) the economic effect of the use on the copyright owner.
C. (1) The economic effect of the use on the copyright owner, (2) the nature of the work used, and
(3) the amount of the work used.
D. (1) The purpose and character of the use, (2) the economic effect of the use on the copyright
owner, (3) the nature of the work used, and (4) the amount of the work used.
25. Which of the following is not true regarding current U.S. copyright law?
A. The material must be sufficiently original.
B. Protection is automatic.
C. Use of a copyright notice is required.
D. Registration is not required.
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26. When an idea and its expression are inseparable, the ________ doctrine dictates that the expression
is not copyrightable.
A. merger
B. genericism
C. prior art
D. protected expression
27. Which of the following is true regarding how damages may be awarded in a patent infringement
case?
A. Damages may be awarded based on (1) the patent holder’s lost profits, (2) the infringer’s profits,
or (3) a reasonable royalty for the infringer’s use of the invention.
B. Damages may only be awarded based on the patent holder’s lost profits.
C. Damages may only be awarded based on the infringer’s profits.
D. Damages may only be awarded based on a reasonable royalty for the infringer’s use of the
invention.
28. A defendant is not liable for trademark infringement if its use is ______ use, meaning that it uses the
mark to talk about the mark itself.
A. comparative
B. transformative
C. unclear
D. nominative
29. A ________ placed on a product indicates that the product has met the certifier’s standards of safety
or quality.
A. certification mark
B. trademark
C. service mark
D. trade name
30. A descriptive mark that is initially unavailable for protection can still become protectable if it
acquires ________ meaning.
A. descriptive
B. geographic
C. personal
D. secondary
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Fact Pattern 11-1 (Questions 31–32 apply)
Samantha develops a new type of comb that effectively removes loose dog hair and eliminates
problems with shedding. Samantha had never seen such a comb on the market and was very
surprised when she received notification that she was being sued for patent infringement by the
holder of a patent on a similar type of comb. Samantha investigates and determines that the earlier
patent was valid. Her friend Harry, a first year law student told her that she could not be guilty of
patent infringement because she was not aware of the earlier patent, and that she should proceed to at
least sell the rest of her inventory.
31. Refer to fact pattern 11-1. Assuming the validity of the earlier patent, which of the following is true
regarding Harry’s statement that Samantha could not be guilty of patent infringement because she
was unaware of the earlier patent when she began marketing her combs?
A. Harry was correct.
B. Harry was incorrect, and Samantha can be held liable for direct patent infringement.
C. Harry was incorrect, and Samantha can be held liable for indirect patent infringement.
D. Harry was incorrect, and Samantha can be held liable for contributory patent infringement.
32. Refer to fact pattern 11-1. Assuming the validity of the earlier patent, which of the following is true
regarding Samantha’s rights to legally continue selling the combs?
A. She should stop selling the combs immediately.
B. She may continue selling the combs until she sells the rest of her inventory, but she must then
stop.
C. Since she was not aware of the earlier patent when she started marketing her combs, she can
continue to sell the combs indefinitely without providing any royalties to the holder of the initial
patent.
D. Since she was not aware of the earlier patent when she started marketing her combs, she can
continue to sell the combs indefinitely, but she must pay reasonable royalties to the holder of the
initial patent.
Fact Pattern 11-2 (Questions 33-34 apply)
Professor Peter enjoys using a small manual containing information on employment laws in his
business law class. The manual costs $100 and is published by We Publish book publishers.
Because Professor Peter wants to save his students some money, he copies the manual and has ABC
Copy Store make copies for students. Students are required to purchase the copies directly from the
copy store. Professor Prudence, who dislikes Peter because she believes he blocked her tenure
application, hears about the deal and notifies the publishing company. The publishing company
demands that the process be stopped and prepares to seek damages.
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A. No, he was engaged in fair use because of his involvement in education.
B. No, because he did not do the actual copying.
C. No, because he did not make a profit.
D. It is likely that he would be found guilty of copyright infringement particularly since he arranged
34. Refer to fact pattern 11-2. Can Copy Store be found guilty of copyright infringement?
A. No, because the use was for education and would be considered a fair use.
B. No, because Professor Peter ordered the copying, and the store was simply following directions.
C. Yes, copy stores can be found liable for copyright infringement for copying without obtaining
permission.
D. Yes, but only if the store failed to have Professor Peter agree to indemnify it for any alleged
copyright infringement.
35. Priscilla bought a new CD with her favorite Christmas music on it. She promptly proceeded to copy
it for 15 of her best friends, including Brenda, and provided it free of charge. Unknown to Priscilla,
Brenda’s brother, Chris, was a member of the band. When he found out how Brenda got the disk, he
angrily called Priscilla and accused her of copyright infringement. Is he correct that Priscilla is
guilty of copyright infringement?
A. It is unlikely that Priscilla is guilty of copyright infringement because of the fair use doctrine.
B. It is unlikely that Priscilla is guilty of copyright infringement because of the merger doctrine.
C. It is unlikely that Priscilla is guilty of copyright infringement because she did not charge her
friends for the copies and did not mass produce the CD.
D. It is likely that Priscilla would be found guilty of copyright infringement.
36. Mandy purchased a business law book and used it during her business law class. She later loaned
the book to Steven, and then to Christen. Another student accused her of copyright violation and
threatened to report her to the book publisher and also to her school’s ethics board. Did Mandy
violate the copyright laws?
A. Yes.
B. No, because her loans would be covered by the fair use doctrine.
C. No, because her loans would be covered under the first sale doctrine.
D. No, because her loans would be covered under the equivalency doctrine
ESSAY QUESTIONS
1. Discuss in detail common law rights, if any, in a trademark in the U.S.
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2. Set forth the requirements an invention must meet in order to be eligible for a utility patent as well as
the requirements for patentable subject matter.
3. McBurger has just developed a new method of preparing its products that greatly reduces the fat
content and other medical problems associated with fast food. Although still in the developmental
phase, McBurger has been very careful not to release any information regarding the process. The
information is constantly under lock and key. Jerry, a competitor’s employee, took a public tour of
McBurger University to evaluate going to work for McBurger. While on the tour, he accidentally
saw the process being conducted in a small laboratory that was visible to everyone, but not part of
the tour. Jerry realized that probably no one else would recognize the process, and said nothing.
Jerry was able to duplicate McBurger’s process, and is now about to be promoted to vice-president
of his company. Does McBurger have a claim against Jerry and his employer? What is the likely
outcome? Discuss fully.
4. Perry is a playwright. He wrote and produced an off-Broadway play about the life of Colonel
Sanders, “Just a Drop in the Bucket,” that closed after the third performance. Later that same year,
on vacation in Los Angeles, he went to see a new production called “Fry It Anyway.” Perry was
appalled to discover that the play was substantially similar to his own. “Fry It Anyway” becomes a
big hit. What protections are available for Perry? What defenses are available against any claims
Perry might make? What additional protections would be available had Perry registered under the
federal Copyright Act? Discuss fully.
5. Jill invented a new type of device to control dog barking without harming the dog. A month later,
Sam independently invented an almost identical type of device. Sam filed for a patent immediately.
When Jill became aware of his filing, she also filed for patent protection. Assuming that there is no
statutory bar, between Jill and Sam, who should be awarded the patent prior to September 16, 2003
and why? What about after September 16, 2013? What law affects the result after September 16,
2013? What would the result be in most other countries?
6. Chef Susan has developed a great new recipe for homemade ice cream that she serves at her
restaurant. She would like to keep the recipe secret and prevent anyone else from using it. What
four areas should a trade secret program cover?