978-1285860381 Chapter 41 Solution Manual Part 1

subject Type Homework Help
subject Pages 8
subject Words 1073
subject Authors Jeffrey F. Beatty, Susan S. Samuelson

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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
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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.
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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:
Copyright Infringement
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
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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
Copyright Term
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
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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.

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