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CHAPTER 8
INTELLECTUAL PROPERTY RIGHTS
ANSWER TO CRITICAL THINKING QUESTION
IN THE FEATURE
DIGITAL UPDATE—CRITICAL THINKING
Some argue that the best way to stop patent trolls from taking advantage of the system
would be to eliminate software patents completely and pass a law that makes software
unpatentable. Would this be fair to software and technology companies? Why or why
ANSWERS TO QUESTIONS
AT THE ENDS OF THE CASES
CASE 8.1—CRITICAL THINKING
WHAT IF THE FACTS WERE DIFFERENT?
Suppose that Coca-Cola had been trying to make the public believe that its product con-
tained cocaine. Would the result in the case likely have been different? Why or why not?
Yes. The product in this case did not actually contain cocaine. To advertise that it did would be
2 UNIT TWO: TORTS AND CRIMES
CASE 8.2—CRITICAL THINKING
E-COMMERCE
Could Jimmy use his last name—the name that he shares with his brother—as a domain
WHAT IF THE FACTS WERE DIFFERENT?
Suppose that Jimmy had used the marks at the center of this case on an entirely different
line of goods, not adult entertainment products. Would the result have been the same?
Explain. Yes, it is likely that the result in the LFP case would have been the same even if
CASE 8.3—LEGAL REASONING QUESTIONS
1A. Which expressions of an original work are protected by copyright law? Works that
are copyrightable include books, records, films, artworks, architectural plans, menus, music
2A. Is all copying copyright infringement? If not, what is the test for determining
whether a creative work has been unlawfully copied? All copying is not copyright
CHAPTER 8: INTELLECTUAL PROPERTY RIGHTS 3
3A. How did the court in this case determine whether the defendant’s work infringed
on the plaintiff’s copyright? In the Winstead case, the court compared the two works to
determine whether Jackson’s songs and film infringed on Winstead’s copyright in his book. The
works shared similar themes and settings, but featured different characters, plots, moods, and
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
2A. Business process patent
No, because all steps of a patented process must be copied to constitute infringement and
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3A. Copyright infringement
Yes, because Halo 2 copies the source codes of Hallowed. Whenever the form or expression of
an idea is copied, an infringement of copyright occurs. The courts generally hold that copying
4A. Intellectual property
The fact that Brad took and sold Trent and Xavier’s idea to another company raises a trade
ANSWER TO DEBATE THIS QUESTION IN THE REVIEWING FEATURE
AT THE END OF THE CHAPTER
Congress has amended copyright law several times so that 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
ANSWERS TO ISSUE SPOTTERS
AT THE END OF THE CHAPTER
1A Roslyn is a food buyer for Organic Cornucopia Food Company when she decides
to go into business for herself as Roslyn’s Kitchen. She contacts Organic’s suppliers,
offering to buy their entire harvest for the next year, and Organic’s customers, offering to
CHAPTER 8: INTELLECTUAL PROPERTY RIGHTS 5
sell her products for less than her ex-employer. Has Roslyn violated any of the
intellectual property rights discussed in this chapter? Explain. Yes, Roslyn has committed
theft of trade secrets. Lists of suppliers and customers cannot be patented, copyrighted, or
trademarked, but the information they contain is protected against appropriation by others as
2A Global Products develops, patents, and markets software. World Copies, Inc.,
sells Global’s software without the maker’s permission. Is this patent infringement? If so,
how might Global save the cost of suing World for infringement and at the same time
profit from World’s sales? This is patent infringement. A software maker in this situation might
ANSWERS TO BUSINESS SCENARIOS
AT THE END OF THE CHAPTER
8-1A. Fair use
Professor Wise will prevail, as he has not violated federal copyright law. Under Section 107 of
8–2A. Patent infringement
Yes. A patent is not deemed useless and therefore invalid simply because it has not been used
ANSWERS TO BUSINESS CASE PROBLEMS
AT THE END OF THE CHAPTER
8–3A. SPOTLIGHT ON MACY’S—Copyright infringement
Copyrights can be registered with the U.S. Copyright Office in Washington, D.C. Copyright
owners protect themselves by registering their copyrights. This registration is evidence that the
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8–4A. Theft of trade secrets
Had Jin been able to prove that she did not know the proprietary nature of the information she
had downloaded from Motorola’s computers, she might have succeeded in her attempt to avoid
criminal prosecution. The court could find no reason to exonerate her from multiple charges of
theft of trade secrets in this situation, though. The government was able to prove beyond a
doubt that Jin knew that the documents she had downloaded were “stolen or appropriated,
8–5A. Copyright infringement
There is no liability for copyright infringement here. Copyright protects the owner of a creative
work, including a “musical work” like a song, from its distribution or public display without the
owner’s permission. To show the work, or even to retain a copy without the owner’s permission,
would constitute infringement.
8–6A. BUSINESS CASE PROBLEM WITH SAMPLE ANSWER—Patents
One ground on which the denial of the patent application in this problem could be reversed on
appeal is that the design of Raymond Gianelli’s “Rowing Machine” is not obvious in light of the
design of the “Chest Press Apparatus for Exercising Regions of the Upper Body.”
To obtain a patent, an applicant must demonstrate to the satisfaction of the U.S. Patent
CHAPTER 8: INTELLECTUAL PROPERTY RIGHTS 7
8–7A. Patents
Yes, the USDA can obtain patents on the two varieties of grapes given to Ludy. Almost anything
is patentable so long as it is novel, useful and not obvious. Plant material can be patented. But
under patent law, an applicant may not obtain a patent for an invention that is in public use more
than one year before the date of the application.
In this problem, a U.S. Department of Agriculture (USDA) employee, without the USDA’s
authorization, gave Jim Ludy, a grape grower, plant material for two unreleased varieties of
grapes. For almost two years, most of Ludy’s plantings bore no usable fruit, none of the grapes
8–8A. Copyrights
No, in the circumstances of this problem, infringement did not occur. Works that are
copyrightable include architectural plans and the products of those plans. The Copyright Act
explicitly states that it protects works that fall into this category. Specifically excluded, however,
are ideas. The particular way in which an idea is expressed can be protected by copyright law if
the expression is original. In other words, one of the key requirements for the protection of a
work is originality. If a substantial part of an original expression is copied, infringement has
occurred.
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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.
The use of a copyrighted work without the permission of the copyright owner may qualify
as a “fair use” of the work, and thus not violate its copyright, in light of a court’s determination of
four factors with respect to the use. The Copyright Act lists these factors as “(1) the purpose and
(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,
8-10A. SPECIAL CASE ANALYSIS—Copyright infringement
Case No. 8.2
Winstead v. Jackson
United States Court of Appeals, Third Circuit, 2013
2013 WL 139622
(a) Issue: This case focused on an allegation of copyright infringement involving what
parties and which creative works? The plaintiff in this case was Shadrach Winstead. His original
(b) Rule of Law: What is the test for determining whether a creative work infringes
the copyright of another work? The test for determining whether a creative work infringes the
copyright of another work is whether a “lay–observer” would believe that the copying was of
infringement.
(c) Applying the Rule of Law: How did the court determine whether the claim of
copyright infringement was supported in this case? To determine whether the claim of copyright
(d) Conclusion: Was the defendant liable for copyright infringement? Why or why
ANSWERS TO LEGAL REASONING GROUP ACTIVITY QUESTIONS
AT THE END OF THE CHAPTER
8–11A. Patents
(a) To obtain a patent, an applicant must show that an invention is novel, useful, and
not obvious in light of current technology. Almost anything is patentable—including artistic
methods, certain works of art, the structures of storylines, and hybrid or genetically modified
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(b) One step that a company can take to fight the theft of its intellectual property rights
for the production and sale of counterfeit goods is to seek a court order to shut down the domain
names of Web sites that sell the goods. Shutting down Web sites, particularly on key shopping
days, prevents the sale of some domestic and foreign counterfeit goods. Against those who in
bad faith use a domain name that is confusingly similar to a legitimate business’s name, a
plaintiff can collect actual damages and lost profits or statutory damages. Use of a trademark as
(c) A license is an agreement permitting the use of a trademark, copyright, patent, or
trade secret for certain limited purposes. A licensor might, for example, allow a licensee to use a
trademark as part of a company name, or as part of a domain name, but not otherwise use the
mark on any products or services. Or the owner of the property might allow a licensee to use the