978-1285860381 Chapter 41 Solution Manual Part 1

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Suggested Additional Assignments

Research: Patents

Ask students to search the Patent and Trademark Office (PTO) database to locate two patented inventions,

one worthwhile and one frivolous. Students should prepare a brief description of each item and explain

why it is worthwhile or frivolous. The PTO’s searchable patent database is located at

http://www.uspto.gov/patft/index.html.

Research: Trademarks

Ask students to make up a name for a hypothetical product and then search to see if anyone else has a

trademark in that name. Their goal is to find a name that they could trademark. Searches are free on the

PTO’s Website: http://www.uspto.gov/.

How Recognizable is that Trademark

Ask students to bring to class a trademark from a product they own. It could be a label from a water or

soda bottle, a tag from a piece of clothing, or a label from a box, etc. Have the student cover up the brand

name. See how many students recognize the mark without seeing the brand name.

Research: Current Events

Have students choose a current event about an intellectual property issue in the news and describe the

issue to the class. What type of intellectual property is at the heart of the issue? Why is this issue

newsworthy?

Chapter Overview

Chapter Theme

Intellectual property is a major source of economic prosperity and individual wealth. New ideas increase

both productivity and pleasure. Where would we be, as a society, without intellectual property–patented

inventions, books, movies, computer software?

Quotes of the Day

“One of the greatest pains to human nature is the pain of a new idea.” –Walter Bagehot (1826–1877),

English economist and journalist.

“He who receives an idea from me, receives instruction himself without lessening mine; as he who lights

his taper at mine, receives light without darkening me.” – Thomas Jefferson (1742-1826), American

president.

Introduction

Thomas Je&erson’s quote

Question: Is it true that “he who lights his taper at mine receives light without darkening mine”?

Answer: This quote represents many people’s view of intellectual property. Unfortunately,

Patents

A patent is a grant by the government permitting the inventor exclusive use of an invention for a certain

time period. During this period, no one may make, use, or sell the invention without permission. In return,

the inventor publicly discloses information about the invention that anyone can use upon expiration of the

patent.

Types of Patents

There are three types of patents: design patents, plant patents, and utility patents

Requirements for a Patent

To receive a patent, an invention must be:

Novel

Nonobvious

Useful

Association For Molecular Pathology V. Myriad Genetics, Inc.

Facts: Mutations in two genes known as BRCA1 and BRCA2 can dramatically increase the risk

of breast and ovarian cancer. Myriad Genetics, Inc. (Myriad) obtained a number of patents on

these genes. One patent gave Myriad the exclusive right to isolate an individual’s naturally

occurring BRCA1 and BRCA2 genes. Another patent granted Myriad the exclusive right to

synthetically create variants of BRCA1 and BRCA2 in the laboratory (cDNA).

A group of researchers filed a lawsuit seeking a declaration that Myriad’s patents were invalid.

The district court struck down the patents on the grounds that they covered products of nature.

The appeals court reversed, holding that both DNA and cDNA were patentable. The Supreme

Court granted certiorari.

Issues: Is naturally occurring DNA patentable? Is manmade cDNA patentable?

Excerpts from Justice Thomas’s Decision: Section 101 of the Patent Act provides: We have

long held that this provision contains an important implicit exception: Laws of nature, natural

phenomena, and abstract ideas are not patentable. Rather, they are the basic tools of scientific

and technological work that lie beyond the domain of patent protection. As the Court has

explained, without this exception, there would be considerable danger that the grant of patents

would “tie up” the use of such tools and thereby inhibit future innovation premised upon them.

This would be at odds with the very point of patents, which exist to promote creation.

In this case, Myriad did not create anything. To be sure, it found an important and useful gene,

but separating that gene from its surrounding genetic material is not an act of invention.

Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101

inquiry. Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by

itself, does not render the BRCA genes “new . . . composition[s] of matter,” that are patent

eligible.

cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA

segments. Creation of a cDNA sequence results in a molecule that is not naturally occurring. The

lab technician unquestionably creates something new when cDNA is made. cDNA retains the

naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As

a result, cDNA is not a “product of nature” and is patent eligible under §101. For the foregoing

reasons, the judgment of the Federal Circuit is affirmed in part and reversed in part.1

Question: According to the Court, what is the purpose of patents?

Question: Why is DNA not patentable, but cDNA is patentable?

1As a result of this decision, other companies now offer tests that gauge the risk of breast and

ovarian cancer. Although cheaper than the Myriad version, they may not be as accurate or as

comprehensive. And, in any event, Myriad has sued to prevent the use of these competing tests.

</FTN>

Patent Application and Issuance

To obtain a patent, the inventor must file a complex application with the PTO. If a patent examiner

determines that the application meets all legal requirements, the PTO will issue the patent. If an examiner

denies a patent application for any reason, the inventor can appeal that decision to the Patent Trial and

Appeal Board in the PTO and from there to the Court of Appeals for the Federal Circuit in Washington.

Infringement

A patent holder has the exclusive right to make, use, or sell the patented invention during the

term of the patent. A holder can prohibit others from using any product that is substantially the

same, license the product to others for a fee, and recover damages from anyone who uses the

product without permission.</International Patent Treaties

An inventor must apply for a patent in each country where patent protection is sought. This is

no easy feat. Nevertheless, about half of all patent applications are filed in more than one

country. This process used to be a logistical nightmare because almost every country had its own

unique filing procedures and standards. Companies were reluctant to develop products based on

technology that they were not sure they actually owned.

Several treaties of the World Intellectual Property Organization now facilitate this process,

although it is still not the one-stop (or one-click) effort that inventors desire. The Paris

Convention for the Protection of Industrial Property (Paris Convention) requires each

member country to accept and recognize all patent and trademark applications filed with it by

anyone who lives in any member country. For example, the French patent office cannot refuse to

accept an application from an American, as long as the American has complied with French law.

Under this treaty, inventors who file in one country have up to one year to file elsewhere and still

maintain patent protection.

Under the Patent Cooperation Treaty (PCT), applicants are offered a single filing and

streamlined review process. Upon filing an international patent application, inventors receive

patent pending protection for 30 months in the 148 PCT member countries, so that they have

time to pursue their application. . Once a PCT application is filed, one of the major patent offices

prepares an “international search report” and issues an opinion on whether the invention is

patentable. This report, while nonbinding, helps applicants assess the patentability of their

inventions and provides persuasive evidence to national patent offices. Inventors who wish to

proceed internationally must then have the report translated and filed with applications and fees

in whichever countries they want a patent.

In addition to these treaties, any country that joins the World Trade Organization (WTO) must agree to

trade-related aspects of intellectual property rights (TRIPS). This agreement does not create an

international patent system, but it does require all participants to meet minimum standards for the

protection of intellectual property. How individual countries achieve that goal is left to them.

Copyrights

The holder of a copyright owns the particular tangible expression of an idea, but not the

underlying idea or method of operation.

Example

Most Americans are familiar with the legal debate over the college students who ran a website that

permitted fellow students to share copyrighted music files.

Question: Why is this activity illegal?

Question: Come on, what’s the harm in copying a few songs off the Internet?

Answer: In this case, it’s more than a few songs. But, no matter how many, it is still illegal. He is

Question: What’s the harm? Record companies make so much money anyway.

Answer: If record companies don’t make money and recording artists aren’t paid, there will be fewer

Case: Lapine v. Seinfeld 2

Facts: Missy Chase Lapine wrote a book called The Sneaky Chef: Simple Strategies for Hiding Healthy

Foods in Kids’ Favorite Meals, which was about how to disguise vegetables so that children would eat

them. Her strategy was to add pureed vegetables to food that children like, such as macaroni and cheese.

(We are not making this up.) Four months later, Jessica Seinfeld, wife of comedian Jerry Seinfeld,

published a book entitled Deceptively Delicious: Simple Secrets To Get Your Kids Eating Good Food

which featured recipes involving pureed vegetables in (guess what?) macaroni and cheese and other

kid-friendly foods.

Lapine filed suit against Seinfeld, alleging violation of her copyright in the content of the book as well as

her trademark in the name and cover design. The district court granted Seinfeld’s motion for summary

judgment and Lapine appealed.

Issue: Did Seinfeld violate Lapine’s copyright and trademark in The Sneaky Chef?

Excerpts from the Decision of the Court:

Plaintiffs assert that the two works are substantially similar in their unique and innovative expression of

the idea of sneaking vegetables into children’s food by means of a cookbook containing comprehensive

instructions for making and storing a variety of vegetable purees in advance, and then using the purees in

specially created recipes for children’s favorite foods. We are not persuaded.

Stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted. In no

case does copyright protection for an original work of authorship extend to any idea, procedure, process,

system, method of operation, concept, principle, or discovery, regardless of the form in which it is

described, explained, illustrated, or embodied in such work. It is a fundamental principle of our copyright

doctrine that ideas, concepts, and processes are not protected from copying.

Further, to the extent the two works have general and abstract similarities — including their vaguely

similar titles and inclusion of illustrations of prepared dishes, health advice, personal narrative,

descriptions of how to make purees, instructions for preparing dishes, and language about children’s

healthy eating — the district court correctly concluded that these elements do not raise a fact issue for trial

because they are “scenes a faire,” or unprotectible elements that follow naturally from the work’s theme

rather than from the author’s creativity.

Our independent comparison of the two cookbooks confirms that the total concept and feel of Deceptively

Delicious is very different from that of The Sneaky Chef. Deceptively Delicious lacks the extensive

2 375 Fed. Appx. 81; 2010 U.S. App. LEXIS 8778 UNITED STATES COURT OF APPEALS FOR THE SECOND

CIRCUIT, 2010

discussion of child behavior, food philosophy, and parenting that pervades The Sneaky Chef. Unlike The

Sneaky Chef, which uses primarily black, gray, and shades of brownish orange, Deceptively Delicious

employs bright colors and more photographs. While The Sneaky Chef assumes greater familiarity with

cooking, recommends thirteen methods for hiding healthy foods, and provides recipes for

multiple-ingredient purees. Deceptively Delicious instructs readers about only single-ingredient purees

and contains more basic instructions.

Plaintiffs correctly note that no plagiarist can excuse the wrong by showing how much of her work she

did not pirate. Like the district court, we nevertheless conclude as a matter of law that the two cookbooks

lack the substantial similarity required to support an inference of copyright infringement.

Trademark Infringement

Having considered the overall impression on a consumer and the context in which the competing marks

are displayed, we reach the same conclusion as the district court: the marks are not confusingly similar.

Defendants’ depictions of a winking woman holding brownies near carrots or simply “shushing” are very

different from plaintiffs’ considerably less detailed and less colorful image of a female chef winking and

“shushing” while holding carrots behind her back. Further, defendants’ use of the famous “Seinfeld” name

reduces any likelihood of confusion regarding the marks. In sum, like the district court, we conclude that

dissimilarity of the marks is dispositive.

Question: Did the court find copyright infringement and/or trademark infringement?

Question: What were some of the courts reasons?

Answer: Recipes for vegetable puree cannot be copyrighted and the look and feel of the two

Key Issue: Infringement Anyone who uses copyrighted material without permission is

violating the Copyright Act.

First Sale Doctrine

The first sale doctrine permits a person who owns a lawfully made copy of a copyrighted work to sell or

otherwise dispose of the copy. This exception to copyright is essential to commerce. If there were no first

sale doctrine, people would not be able to rent movies or sell their used cars (or anything else). eBay

might not exist. And museums and libraries would certainly be out of business, because any display or

distribution of a copyrighted work would constitute infringement.

KIRTSAENG V. JOHN WILEY & SONS, INC. 3

Facts: John Wiley & Sons, Inc. (“Wiley”), published English language textbooks. It sold some

of these books abroad through its subsidiary, Wiley Asia, at a lower price than in the United

States. A notice on their inside cover stated they were not to be taken into the United States

without Wiley’s permission.

In 1997, Supap Kirtsaeng moved from Thailand to the United States to attend Cornell

University. Friends and family bought foreign editions of the textbook and mailed them to him at

Cornell. He sold the books online.

Wiley filed suit against Kirtsaeng, claiming that his unauthorized importation and resale

of its books was copyright infringement. Furthermore, Wiley argued that the first sale doctrine

3 133 U.S. 1351 United States Supreme Court, 2013

did not apply because it was limited geographically to products “lawfully made” in the United

States. Kirtsaeng responded that the first sale doctrine permitted his actions because his books

were “lawfully made” according to the Copyright Act (that is, made with the copyright owner’s

permission) and that the first sale doctrine was not limited by geography. The District Court held

for Wiley, concluding that the doctrine did not apply to goods manufactured abroad. On appeal,

the Second Circuit affirmed. The Supreme Court granted certiorari.

Issue: Did the first sale doctrine apply to copyrighted works purchased abroad?

Excerpts from Justice Breyer’s Decision: We must decide whether the words “lawfully made

under this title” restrict the scope of § 109(a)’s “first sale” doctrine geographically.

In our view, § 109(a)’s language, its context, and the common-law history of the “first

sale” doctrine, taken together, favor a nongeographical interpretation. The language of § 109(a)

read literally favors Kirtsaeng’s nongeographical interpretation, namely, that “lawfully made

under this title” means made “in accordance with” or “in compliance with” the Copyright Act.

The language of § 109(a) says nothing about geography.

Both historical and contemporary statutory context indicate that Congress, when writing

the present version of § 109(a), did not have geography in mind. The “first sale” doctrine is a

common-law doctrine with an impeccable historic pedigree. In the early 17th century Lord Coke

explained the importance of leaving buyers of goods free to compete with each other when

reselling or otherwise disposing of those goods. American law too has generally thought that

competition, including freedom to resell, can work to the advantage of the consumer.

The “first sale” doctrine also frees courts from the administrative burden of trying to

enforce restrictions upon difficult-to-trace, readily movable goods. And it avoids the selective

enforcement inherent in any such effort. Thus, it is not surprising that for at least a century the

“first sale” doctrine has played an important role in American copyright law.

We also doubt that Congress would have intended to create the practical copyright-related

harms with which a geographical interpretation would threaten ordinary scholarly, artistic,

commercial, and consumer activities. The American Library Association tells us that library

collections contain at least 200 million books published abroad. How are the libraries to obtain

permission to distribute these millions of books? Used-book dealers tell us that, from the time

when Benjamin Franklin and Thomas Jefferson built commercial and personal libraries of

foreign books, American readers have bought used books published and printed abroad. But

under a geographical interpretation a contemporary tourist who buys, say, at Shakespeare and

Co. (in Paris), a dozen copies of a foreign book for American friends might find that she had

violated the copyright law.

We consequently conclude that Kirtsaeng’s nongeographical reading is the better reading

of the Act.

The judgment of the Court of Appeals is reversed.

Question: What is the first sale doctrine?

Question: What three things did the Supreme Court rely on to decide that the first sale doctrine

favored a nongeographical interpretation?

Question: What administrative burden does the first sale doctrine free the courts from?

Fair Use

The fair use doctrine is important because it permits limited use of copyrighted material without

permission of the author. When copyrighted material is used for purposes such as criticism, parody,

comment, news reporting, scholarship, research, or education, it is more likely to be a fair use.

Additional Case: Campbell v. Acu-Rose Music, Inc., 4

Facts: Acuff-Rose filed suit against the members of a rap group, 2 Live Crew and their record company,

claiming that 2 Live Crew’s song “Pretty Woman” infringed Acuff-Rose’s copyright in Roy Orbison’s

song “Oh Pretty Woman.” The District Court granted summary judgment for 2 Live Crew holding that

the song was a parody and thus a fair use of the copyrighted work. Acuff-Rose appealed and the appellate

court reversed, holding that because the 2 Live Crew song was used for a commercial purpose, it is

presumptively unfair, and because Campbell used so much of the original work in its work, the group had

taken too much of copyrighted work. The United States Supreme Court granted certiorari.

Issue: Is the parody a fair use of the original work?

Decision: Appellate decision reversed and remanded. The Copyright Act of 1976 indicates that there are

allowable fair uses of copyrighted work, such as uses for criticism, comment, news reporting, and

teaching. The Act also states that four factors must be weighed in determining whether a use of a

copyrighted work constitutes a fair use. The four factors are: 1. the purpose and character of the use; 2.

the nature of the copyrighted work; 3. the amount of the copyrighted work used; and 4. the effect of the

use on the market for the copyrighted work.

According to the court, parody, like other comment and criticism may claim fair use. Under the first

factor, the focus is on whether the new work merely replaces the original work, or whether the new work

is a new “transformative” work, inserting new meaning and expression. The more transformative the new

work, the less important the commercial nature of the new work is considered. For parody in particular,

the heart of any parodist’s claim to quote from existing material is the use of some elements of an original

work to create a new work that comments on that author’s work. Here, 2 Live Crew juxtaposes “the

romantic musings of a man whose fantasy comes true” with degrading lyrics, a demand for sex, and relief

from paternal responsibility. The words can be taken as a commentary of the original, as a rejection of its

sentiment that ignores the “ugliness of street life and the debasement that it signifies.” This marriage of

reference and ridicule is the hallmark of parody that traditionally has enjoyed fair use protection as a

transformative work. According to the Court, the transformative nature of 2 Live Crew’s work should be

balanced against the commercial use of the work. Commerciality does not mean a presumptively unfair

use, to so hold would “swallow nearly all of the illustrative uses listed in the preamble” of the Act.

The third factor asks whether the amount of the original work used is reasonable in relation to the purpose

of the copying. The court agreed that the extent of the copying depends on the purpose of the copying.

According to the Court, parody presents a difficult case because parody’s commentary stems necessarily

from a recognizable reference to the original work. Thus, a parodist may use the most recognizable parts

of the original in its own parody of that original, but the context of the use is important. According to the

court, 2 Live Crew copied the characteristic opening bass riff of the original and the words of the first line

of the original. However, although those are the most recognizable portions of the original, the group also

departed significantly from the original lyrics, and otherwise produced distinctive sounds, and overlaying

the music with solos in different keys.

4 510 U.S. 569, 114 S.Ct. 1164, 1994.