ALTERNATE CASE PROBLEM ANSWERS
CHAPTER 8
INTELLECTUAL PROPERTY
AND INTERNET LAW
8-1A. Trademark infringement
(Chapter 8—Page 154)
The court agreed with Nike that its trademarks are widely recognized and deserve protection but
pointed out that to prevail, Nike needed to show a likelihood of confusion on the part of the public. The
court concluded that Stanard’s parody did not infringe Nike’s trademarks as a matter of law. The court
8-2A. Domain name disputes
(Chapter 8—Pages 156158)
The court granted Gallo a summary judgment and awarded $25,000 in statutory damages. The court
enjoined the Thumanns from using the domain name “ERNESTANDJULIOGALLO.COM” and from
8-3A. Copyright infringement
(Chapter 8—Page 163)
The court ruled that Nintendo’s lockout program included original protectable expression. The court
agreed with Atari that intermediate copying for the purpose of understanding the ideas and processes of
a copyrighted program can be a fair use, depending on the nature of the work. The object code on the
chip in Nintendo’s system could not be “observe[d], let alone [understood],” without reverse
engineering. Thus, reverse engineering is a fair use if it is limited to whatever is necessary to understand
the unprotected elements of a work. Any further copying, however, is infringement. The fair use doc–
trine is an equitable doctrine, subject to equitable principles, including the clean-hands doctrine, which
requires good faith and fair dealing. Because Atari acquired its copy of the source code through false
representations, its copy was unauthorized, and its reverse engineering could not qualify as a fair use.
B-32 APPENDIX B: ALTERNATE CASE PROBLEM ANSWERS—CHAPTER 8
the expression of those ideas. As to the third factor—the amount of the work used in relation to the
8-5A. Trademark infringement
(Chapter 8—Page 154)
The court acknowledged that “CBS’s mark protects it in the field of television production services,” but
pointed out that “[t]he mark does not insure its exclusive use of the mark ‘Television City’ in all markets
8-6A. Trade secrets
(Chapter 8—Pages 167–168)
The U.S. Court of Appeals for the Seventh Circuit affirmed the order of the district court. The appellate
8-8A. Trademark infringement
(Chapter 8—Page 154)
The court held, among other things, that the service mark, “The Velvet Elvis,” did not infringe on the
trademarks of Elvis Presley Enterprises, Inc. (EPE), and EPE appealed. The U.S. Court of Appeals for the
8-9A. Trademark infringement
(Chapter 8—Page 154)
The court found a “possibility of confusion” between THE MIRACLE BRA trademark and the
8-10A. A QUESTION OF ETHICS
1. As the appellate court recognized, Bonyard’s chief difficulty in avoiding disclosure of IBM’s
trade secrets might be in determining what it is that he is not to disclose. The subject matter of trade
2. Fundamental policies underlying trade secret protection include the incentive that
protection provides for innovation—that is, protecting trade secrets encourages efforts and investment
in research and development by providing some control over the commercial results. Protection of
trade secrets also helps to maintain ethical standards (trust, loyalty, confidence) by prohibiting the use
3. Most trade secret owners control the dissemination of their trade secrets and lessen the
4. In a society based on free competition, an employee has a right to make use of the general
knowledge or skill that he or she acquires through experience in pursuing the occupation for which he or