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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
(c) Research: Find out how the Supreme Court ruled in this case.
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:
(c) COWS, Inc.
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:
