CHAPTER 8
INTELLECTUAL PROPERTY
AND INTERNET LAW
ANSWERS TO QUESTIONS
AT THE ENDS OF THE CASES
CASE 8.1—QUESTION (PAGE 153)
WHAT IF THE FACTS WERE DIFFERENT?
Suppose that Coca-Cola had been trying to make the public believe that its product contained cocaine.
Would the result in the case likely have been different? Why or why not? Yes. The product in this case
CASE 8.2—QUESTIONS (PAGE 160)
1A. Suppose that a person of ordinary skill creates an item by implementing a predictable variation
of another’s patented invention. Does the Court’s opinion indicate that the item is likely or unlikely to be
patentable? Discuss. Yes, if, under the principles noted in the KSR case, a patent claiming the
combination of elements of prior art is obvious. “When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In
that instance the fact that a combination was obvious to try might show that it was obvious” for the
purposes of a patent claim.
2A. Based on the Court’s reasoning, what other factors should be considered when determining the
obviousness of a patent? The Court explained that a court may need “to look to interrelated teachings of
CASE 8.3—QUESTION (PAGE 166)
THE ETHICAL DIMENSION
In this and other cases involving similar rulings, the courts have held that when the published
phonorecordings from which audio files were taken contained copyright notices, the innocent infringer
defense does not apply. It is irrelevant that the notice is not provided in the online file. Is this fair?
Explain. Some contend that labels placed on the physical copies of the CDs from which downloaded
songs originate are not sufficient notification to someone who accesses the songs on the Internet.
Therefore, this group claims, the courts should not rule out the innocent infringer defense as a matter of
law just because the original works were copyrighted. Rather, in situations such as Harper’s, defendants
should be able to use the defense—and the burden for defendants using the defense is not slight.
ANSWERS TO QUESTIONS IN THE REVIEWING FEATURE
AT THE END OF THE CHAPTER
1A. Trademark or trade dress
The name of the video game Hallowed would not receive protection as either a trademark or trade dress
because the game had not been released to the general public for use. The law protects only trademarks
that are in use. Trade dress applies to a product’s distinct image and appearance, but only once the
distinctiveness of a product’s appearance has been established.
CHAPTER 8: INTELLECTUAL PROPERTY AND INTERNET LAW 67
their equivalent must be copied. In this scenario, while Halo 2 uses some of the same source codes as
Hallowed, not all features alike, so it does not infringe on Hallowed’s patent.
3A. Copyright infringement
Yes, because Halo 2 copies the source codes of Hallowed. Whenever the form or expression of an idea is
4A. Intellectual property
The fact that Brad took and sold Trent and Xavier’s idea to another company raises a trade secret issue,
ANSWER TO DEBATE THIS QUESTION IN THE REVIEWING FEATURE AT THE END OF THE
CHAPTER
Congress has amended copyright law several times. Copyright holders now have protection for
many decades. Was Congress right in extending these copyright time periods? Why or why not?
Obviously, copyright holders whose copyrights were about to run out benefited from the time-period
extensions legislated by Congress. Hence, they certainly believe that Congress acted correctly. (It’s not
surprising that major copyright holders such as large movie companies, record labels, and publishing
houses did most of the lobbying that led to extensions of copyright protection periods.) In general, one
can argue that more effort will go into the creation of intellectual property the longer the period of
68 UNIT TWO: TORTS AND CRIMES
ANSWERS TO QUESTIONS AND CASE PROBLEMS
AT THE END OF THE CHAPTER
8-1A. Fair use
(Chapter 8—Page 163)
8-2A. QUESTION WITH SAMPLE ANSWER: Copyright infringement
(a) Ursula will not be held liable for copyright infringement in this case because her photocopying
pages for use in scholarly research falls squarely under the “fair use” exception to the Copyright Act.
(b) While Ursula’s actions are improper, they could constitute trademark infringement, not
8-3A. Trademark infringement
(Chapter 8—Page 154)
8-4A. Patent infringement
(Chapter 8—Page 161)
The court found that, among other things, Wal–Mart infringed Golight’s patent, the infringement was
willful, and Golight was entitled to damages. Wal-Mart appealed to the U.S. Court of Appeals for the
Federal Circuit, arguing in part that any infringement was not willful. The appellate court affirmed the
8-5A. Trade secrets
(Chapter 8—Pages 167–168)
A trade secret is information that makes a company unique and has value to its competitor. The federal
district court in which this suit was brought asked the Wyoming Supreme Court (the defendants were
based in Wyoming) for the elements of that state’s common law cause of action for trade secret
8-6A. CASE PROBLEM WITH SAMPLE ANSWER: Trademarks
The court issued a judgment in Horphag’s favor on the dilution claim. Garcia appealed to the U.S. Court
of Appeals for the Ninth Circuit, which affirmed the lower court’s judgment. The Federal Trademark
Dilution Act provides relief for the owner of a famous mark if another’s commercial use of a mark
8–8A. Trade secrets
(Chapter 8—Pages 167–168)
Under Alabama law, a trade secret is information that: “a. Is used or intended for use in a trade or
business; b. Is included or embodied in a formula, pattern, compilation, computer software, drawing,
8-9A. A QUESTION OF ETHICS: Copyright infringement
(a) Under the Copyright Act, anyone who violates an owner’s rights to a copyrighted work
infringes the copyright. Among these is the right to copy the work. Thus, even if Custom Copies did not
distribute the coursepacks, it could be liable for infringement by copying copyrighted material. The court
denied the defendants’ motion to dismiss the suit.
CHAPTER 8: INTELLECTUAL PROPERTY AND INTERNET LAW 71
(b) Publishers invest heavily in their operations. Each year they incur substantial costs for
copyediting, proofreading, typesetting, layout, printing, binding, distribution, promotion, and other
expenses. The revenue from the publication and sales of books and journals represents the majority of
Blackwell’s, and most other publishers, annual income. If the copyrights were not respected, a decline in
income could cause the owners to stop publishing their books, journals, and other materials. This could
(b) Suppose that after Navin legally protects his idea, Fox steals it and decides to develop it
trademark, patent, or copyright? Fox has committed patent infringement. Patent infringement
(c) Suppose that after Navin legally protects his idea, he realizes he doesn’t have the funds to
mass-produce the special handle. Navin therefore agrees to allow Fox to manufacture the
product. Has Navin granted Fox a license? Explain. Yes, Navin has granted Fox a license because
he has given Fox permission to use his property (the patented idea) for a certain purpose
ANSWER TO VIDEO QUESTION NO. 8–10
The Jerk
(a) In the video, Navin (Steve Martin) creates a special handle for Mr. Fox’s (Bill Macy’s)
glasses. Can Navin obtain a patent or a copyright protecting his invention? Explain your answer.
Navin should obtain a patent on his invention. Copyrights are reserved for literary or artistic
productions. Patents are used for inventions, discoveries, processes, or designs that are genuine,
novel, useful and not obvious in light of current technology.
72 UNIT TWO: TORTS AND CRIMES
(manufacturing the product).
(d) Assume that Navin is able to manufacture his invention. What might Navin do to ensure
that his product is identifiable and can be distinguished from other products on the market?
consumers identify his product and vouch for its origin.