978-1285428567 Chapter 9 Solution Manual Part 2

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Trademarks, Servicemarks, and Trade Dress

Tecumseh Poultry, LIC. V. Perdue Holdings, Inc., Questions, p. 355 – 356

1. Does Fortres Grand have any basis for bringing a trademark infringement suit?

Explain.

In order to prove trademark infringement, Fortres Grand would have to prove that Warner

Brother’s use “clean slate” was substantially likely to confuse consumers about the source of a

product.

The case was dismissed because there were no grounds to believe that consumers would confuse

the source of the fictional product. Use of “clean slate” was protected by the First Amendment:

Fortres Grand Corporation v. Warner Brother Entertainment, Inc.:

2. “Born to Rock” is the registered trademark for an electric guitar company whose owner

is upset that D has sold merchandise with the words “Born to Rock” on it. Does this

violate the Lantham Act? Research: Find out how the court ruled in a similar case:

Born to Rock Design, Inc. v. CafePress.com, Inc.

Whether or not the Lantham Act is violated may depend on what merchandise is being sold.

For detailed information on the Born to Rock Design, Inc. v. CafePress.com, Inc., see:

3. Two Pesos and Taco Cabana Trade Dress Infringement

Does this punishment seem fair? Who are the stakeholders? What ethical theory most

closely reflects the legal analysis and result?

Answers will vary by student. We can all think of restaurants that we recognize based on their

4. If a pizza place uses granite countertops, ceramic tiled walls and floors, a large backlit

menu, neon lighting, and stainless steel shelving units behind the service counter, would

be he be guilty of infringing on trade dress claimed by a competitor pizza place?

In order to be protected, the trade dress must be “distinctive” enough to identify the owner and

cannot be merely “functional.” Whether or not this is infringement most likely depends on the

Patents

Intellectual Property Rights, International Trade, and the Right to Health, Monica Steffen

Guise Rosina, Lea Shaver, Questions, p. 361

1. Who are the stakeholders and what are the ethical issues? How would you analyze them

using ethical theory?

Stakeholders include those who need access to the less expensive drugs and the companies who

produce them. The company that developed the brand name drug and holds the patent is also a

2. The WTO is concerned with whether EU’s border measures violates free trades. How

might border seizures interfere with free trade? Should the WTO be concerned with

human rights considerations? How would those play out in this scenario?

The premise of free trade is that is that it is dictated by the market and the government does not

3. Research: Find out whether the WTO has resolved this issue. How has it dealt with

other actions brought by the EU? Has the U.S. confiscated generic drugs for similar

reasons?

This is still an ongoing issue. A recent article is found here:

Trade Secret

PepsiCo, Inc., v. Redmond, Questions, p. 364

1. What effect does the outcome of this case have on Redmond’s ability to earn a living?

Should PepsiCo have to re-hire him?

2. Suppose PepsiCo had terminated Redmond before Quaker hired him. Do you think

this case would be decided differently? Should it be?

3. If PepsiCo offered you a job, what impact would cases like Redmond have on your

decision?

4. Assume you are starting a new computer software company. What impact might

decisions like this one have on your hiring process?

Several issues are raised here: Is it better to hire the brightest and the best with the knowledge

5. Does Redmond’s willingness to sell his expertise to the highest bidder violate your sense

of commercial morality?

Students should look at the ethical theories to answer this one. Students subscribing to the free

market ethics would likely not see anything amoral about Redmond’s willingness to sell his

GLOBAL INTELLECTUAL PROPERTY RIGHTS (IPR)

Human Rights and IP

Statement on Human Rights, Human Dignity and the Information Society, Questions, p.

367

1. Research: Find another position paper that influenced the World Summit on the

Information Society and compare it to the one in the text.

2. Research: Find the Geneva Declaration of Principles. Do you see any influence of

Statement of Human Rights that is found in the text in that Declaration? How do they

differ?

The Geneva Declaration of Principles can be found here:

Answers will vary by student but some differences include the following. Both documents

express support for developing nations and the use of information technology to assist in

CHAPTER PROBLEMS

1. Kirtsaeng v. John Wiley & Sons, Inc.

(a) Who are the stakeholders?

(b) Evaluate the publisher and Kirtsaeng using the ethical theories from chapter 1.

This is a good question for team discussion. Have one group evaluate from the publisher

The Supreme Court reversed the decision of the lower courts:

2. First sale doctrine for digital music of software.

(a) Research: Find out how the court ruled in Capital Records, LLC v. ReDigi.

The district court grated summary judgment to Capital Records:

(b) Research: Find out how the European Court of Justice ruled in a similar case

involving the resale of Oracle software.

The Court determined that reselling downloaded software was acceptable:

3. Biotech Inventions

4. What are Newton’s legal rights? Are there any ethical arguments in support of the

Beastie Boys? Any against?

The opinion, as amended in 2004, can be found at Newton v. Diamond, 388 F.3d 1189 (9th Cir.

2004). The District Court held that the three-note segment of “Choir” that was used by the

Beastie Boys was not copyrightable because it was not original. The court further stated that,

Ask teams to consider the ethical issue, both for and against the Beastie Boys.

5. What rights does the AP have? Does Fairey have any legal rights?

As the owner of the photo, the AP alleged copyright infringement and Fairey argued fair use.

Fairey also received two years probation for destroying documents and fabricating others in his

lawsuit against the AP:

6. What can and should you do with a new-generation peer-to-peer software?

7. Susan’s Derbie pie

(a) Can anyone legally stop you from using your grandmother’s recipe for your

dessert?

(b) Can anyone legally stop you from calling it Susan’s Derbie Pie?

While it is true that “Derby Pie” is trademarked, infringement would require: (1) that the

name “Susan’s Derbie Pie” is substantially likely to confuse consumers about the source

8. Which might lead to a trademark claim?

(a) Alternate Barbies

He modified the website to avoid copyright infringement.

Mattel continued by claiming that the website diluted the Barbie trademark:

(b) The Naked M&Ms

Robert Burck, the Naked Cowboy, did sue Mars, Inc. for false endorsement under

federal trademark laws. Mars, Inc. countered that this was a fair use as a parody. The

Court ruled that Mars did not violate the right of publicity, but failed to rule on Burck’s

Lantham Act Claim of False Endorsement:

This is a Canadian company. Viacom did file a suit claiming infringement in both the

United States and Canada. The United States case was dismissed. The Canadian case

was withdrawn:

9. Crimes of misappropriation of trade secrets in violation of the Economic

Espionage Act of 1996. Research: Find criminal cases involved in

wrongful taking of a trade secret.

A list of cases may be found at:

10. Has Fly violated the rights of Barclays and Morgan Stanley? Are there are arguments

in support of Fly?

Barclays and Morgan Stanley sued Fly for copyright infringement. The district court entered

judgment in favor of the plaintiffs:

Fly appealed and the judgment was reversed: