CHAPTER 17
PROTECTION AND LICENSING OF INTELLECTUAL PROPERTY
CASES IN THIS CHAPTER
Apple, Inc. v. Samsung Electronics Co., Ltd.
Diamond v. Chakrabarty
Mobile Communications Services, Inc. v. WebReg, RN
TVBO Production Limited v. Australia Sky Net Pty Limited
Comite Interprofessional du Vin de Champagne v. Wineworths Group, Ltd.
A. Bourjois & Co. v. Katzel
CSU et al. v. Xerox Corporation
TEACHING SUMMARY
The protection of intellectual property, be it copyrighted materials, trademarks/ tradenames, or
technological patents, has become increasingly important in the global marketplace. For
example, a patent application or trademark filed in one country will not ensure IPR protection in
another country. Many international treaties, such as WIPO, and disputes resolution systems
now exist that provide uniform rules, seeking to protect IPR and recognizing divergent national
protections of IPR. The most recent incarnation of this issue has been with regard to
technologies and domain names.
CASES AND QUESTIONS
Apple, Inc. v. Samsung Electronics Co., Ltd.
1. Should patent cases be decided by lay judges and juries?
Answer: On the one hand, almost all cases are decided by lay judges and juries, so
2. Are litigation damages too high in patent cases?
Chapter 17: Protection and Licensing of Intellectual Property
3. How can the legislature improve the patent system and reduce the inefficiencies of
litigation?
Answer: Worthy of discussion, but difficult to answer.
Diamond v. Chakrabarty
1. The foregoing decision was decided by the Supreme Court by only a 5 to 4 vote. Do less
developed nations agree with the majority or minority? Why?
2. Has the development of artificial life forms been encouraged by the Supreme Court’s
decision? Is this a good thing? What would have happened to the Horizon oil spill in the
Gulf of Mexico without crude oil-ingesting organisms?
3. Do industrialized nations like the United States tend to expand the scope of IPRs? Why?
Mobile Communications Services, Inc. v. WebReg, RN
1. Would the Complainant have won the case if it could not show that it had an interest in
the name Mobilcom? Must all of the elements be shown to get relief?
2. Is it acceptable to have a business selling domain names? How must such a business
show that it creates domain names?
Chapter 17: Protection and Licensing of Intellectual Property
3. How would one show that the company creating domain names was aware of another
firm’s use of a dictionary term as a trademark?
TVBO Production Limited v. Australia Sky Net Pty Limited
1. How difficult would it have been for plaintiffs like TVBO to find out who was stealing and
rebroadcasting its signal?
2. How would an Australian court enforce its jurisdiction over a foreign copyright infringer?
3. If it were difficult to trace this type of piracy, would it be worthwhile for the pirate to
continue? How would a court system discourage this type of piracy?
Comite Interprofessional du Vin de Champagne v. Wineworths Group, Ltd.
1. The result in this case means that “champagne” is an enforceable IPR in New Zealand
and the United Kingdom, but not in Australia, Canada, or the United States. Do you think
that the court’s approach was objective or subjective? What does this suggest about
trademark law?
Chapter 17: Protection and Licensing of Intellectual Property
2. The court reached its decision by reviewing evidence about association between the
word champagne and the product from France. Such surveys were organized and
conducted by experts for each of the parties. Were these surveys subjective or
objective? Whose job is it to determine which surveys are more reliable?
3. The Coca Cola Company hires personnel worldwide to assure that when consumers
order a “coke,” they are either served Coca-Cola products or are advised that none are
available. Why?
A. Bourjois & Co. v. Katzel
1. Certain German automobiles that are regarded as non-luxury in Germany have
upgraded options before shipment to the United States, where they are marketed by the
U.S. licensees as luxury cars. How would this business model be adversely affected if
not for the Bourjois decision?
2. How does the protection afforded by Bourjois hurt U.S. consumers?
3. If the Bourjois protection were not afforded, what would this mean for U.S. licensees of
products from outside of the United States?
CSU et al. v. Xerox Corporation
1. Is there a conflict between antitrust laws and IPR laws? If so, how can such a conflict
be resolved by the legislature or the courts?
Chapter 17: Protection and Licensing of Intellectual Property
that is the province of the legislature. The conflicts have been resolved on a case-by-
2. Should the courts or the legislature impose a duty to license to prevent a company to
monopolize a market?
ANSWERS TO QUESTIONS AND CASE PROBLEMS
1. Answer: As already alluded to in the question, if Hirt continues manufacturing its product
domestically, it will face higher labor costs that will have to be recovered through either
2. Answer: In a joint venture, someone outside the Hirt chain of command would have
access to the entire know-how. The holder of the know-how is completely at the mercy of the legal
3. Answer: Barthelemy offers Hill an instant marketing base and resources with which to
promote his shoes. Further, because Mr. Hill’s innovation is patented, he has less to fear from the
“tres grande” monster swallowing him up. And Barthelemy is much better positioned in Western
4. Answer: Under the gensoku kinshi system, Japan’s regulators have historically tended to
Chapter 17: Protection and Licensing of Intellectual Property
invention is patented, he can feel a bit more secure in dealing with his joint venture partner. The
downside would be that after a stated period of time, the joint venture partner will probably be
5. Answer: There are three basic types of regulatory schemes for international IPR transfer.
A prior approval scheme is the most intrusive of the three, requiring government approval prior
6. Answer: Under the Lever Rules, the domestic grantor of the copyright license (or holder
of the original copyright) has the right to prevent the gray market good from entering the United
7. Answer: Geyer must comply with both international and German domestic IPR law.
Under Deutsche Grammophon, Geyer would appear to be out of luck. The bonbons are exactly
the same product as is being sold in Germany; Geyer is engaging in pure differential pricing. The
INTERNET EXERCISE: ADDITIONAL BACKGROUND
Find the WIPO Digital Agenda atwww.wipo.int/copyright/en/digital_agenda.htm. WIPO plans to
offer a simplified method to file and obtain international protection for patents and trademarks.
This service will be offered over the Internet. Additionally, WIPO also provides dispute-resolution
services for those involved in international disputes pertaining to the assignment of domain
names (a form of IP). Have students review and comment on these plans. Some organizations
have recently advocated and experimented with on-line dispute resolution, where parties
engage in the entire dispute resolution process through a chat room-like forum. What are the
Chapter 17: Protection and Licensing of Intellectual Property
benefits and detriments to such an Internet-mediated forum for Internet-related disputes? Why
might aggrieved parties shy away from this process?
MANAGERIAL IMPLICATIONS
1. Answer: (a) France will be required to analyze the issue based on TRIPS, which requires
2. Answer: (a) According to a July 2003 report by the State Council’s Development
Research Center, the market value of counterfeit goods in China is between $19 billion and $24
(b) China has resolved to address IPR enforcement issues. In October 2003, the
Chapter 17: Protection and Licensing of Intellectual Property
3. Answer: L’Anza should have set forth specific provisions in its distributorship that
included the “first sale” doctrine enunciated in Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908),
and limited the re-sale of its products, especially back into the United States. L’Anza did not