<p> BOSTON COLLEGE LAW SCHOOL</p><p>FINAL EXAMINATION: INTELLECTUAL PROPERTY LAW (COURSE NO. LL41402)</p><p>PROFESSOR JOSEPH P. LIU</p><p>* * * * *</p><p>SPRING SEMESTER 2005</p><p>* * * * *</p><p>3 QUESTIONS TAKE HOME EXAMINATION</p><p>TOTAL TIME: 24 Hours</p><p>* * * * *</p><p>PICKUP: ANY DAY DURING EXAM PERIOD, BETWEEN 9:30-10:00 A.M. OR 4:00-4:30 P.M. AT ACADEMIC SERVICES; OR ON-LINE VIA EXAM-SOFT DUE: 24 HOURS AFTER TIME OF PICKUP</p><p>INSTRUCTIONS: READ CAREFULLY</p><p>PICK UP AND DROP OFF. This is a 24-hour take-home examination. You may pick up this examination at the Academic Services Office on any of the days and times indicated above or alternatively download the exam using Exam Soft. Your answers must be turned in within 24 hours of the time you picked up the exam. If you miss the deadline, your answer may be treated as if it had not been turned in. Please budget sufficient extra time (e.g. for transportation, last-minute technical delays, etc.) to make sure that you hand in your answers by the deadline.</p><p>DISCUSSION OF EXAM. Because this is a freely-schedulable take-home exam, it is absolutely critical that information concerning the exam not be disclosed to students who have not yet taken the exam. Accordingly, after you have taken the exam, you may not discuss the exam with anyone who has not yet taken the exam. Furthermore, since disclosure may be inadvertent, you must take care not to discuss the exam in any place where details of the exam may be overheard by other students who have not taken the exam. This is absolutely essential to ensure that the test is fair and that no students obtain an unfair advantage. </p><p>1 GENERAL INSTRUCTIONS. The exam has three questions. The questions are weighted according to the percentages set forth below, so please allocate your time and effort accordingly. Please read each question carefully before answering, paying particular attention to the type of answer that each question is asking for. Please also spend adequate time planning your responses prior to writing your answers. Clear organization and analysis will do wonders for your answer. To that end, please try to budget some time at the end for reviewing and editing your answers.</p><p>RESOURCES. This is a limited open book exam. This means that you may consult the casebook, any outlines or notes, any commercial or third-party outlines, any other books or articles that you have purchased or borrowed. You may not, however, share any copies of such resources with other students during the course of the exam. In addition, you may not consult any on-line resources such as Westlaw or Lexis or the World Wide Web during the exam. You may not consult or communicate with any other individual about either the form or substance of the exam during the period in which you are taking the exam. If there are any ambiguities in either the form or substance of the examination, do not discuss the exam with anyone else; instead, indicate any assumptions you are making and proceed to answer the question as best you can.</p><p>FORMAT, WORD LIMITS, RELATIVE WEIGHT. Answers should be typed, double spaced, 12-point font with reasonable margins. The maximum word limits below will be strictly enforced. At the end of each answer, include the total number of words in the answer (including words in the footnotes, if any) using your word processor’s word count tool.</p><p>LIMIT WEIGHT QUESTION 1: 1500 WORDS 33% QUESTION 2: 1500 WORDS 33% QUESTION 3: 1200 WORDS 33%</p><p>These word limits are maximum limits. Of course, you may choose to use fewer than the maximum words. (But you cannot “save” words from one question to use for another.) It may be that you will be unable to say all you want to say within the existing word limits. If this is the case, then you will need to make judgments about the relative importance of the points you wish to make.</p><p>CASE CITATIONS. You needn’t refer to any cases by name in any of your answers, unless the question specifically asks for such or would clearly warrant such. A perfectly acceptable answer can be turned in without mentioning a single case by name. However, if you do wish to refer to any cases (whether for support, as an example, or as a short- hand for a particular legal rule), simply write the case name or a recognizable abbreviation. Do not cite any cases that are not in the case book – this exam does not require any additional research (and conducting such additional research will probably serve only to confuse you); rather, this exam tests how well you have mastered the legal materials that have been assigned during the course. All Material Must Be Returned to Academic Services</p><p>2 QUESTION 1 (33%): (1500 WORDS)</p><p>You are a junior associate at a mid-sized law firm. One evening, just as you are preparing to leave the office, your phone rings. A partner is on the other end of the line. She says that a client of hers will be coming into the office tomorrow morning. The client needs some advice concerning a number of potential legal issues. Unfortunately, the partner is going to be out of town tomorrow morning and will be unable to meet with the client. However, she would like you to meet with the client and find out the nature of the legal issues facing the client. She would also like you to draft a short memo for her, outlining any legal claims that the client could possibly have against other parties or that the other parties could possibly bring against the client, along with your preliminary assessment of the likelihood of success of any of these claims.</p><p>The next morning, you meet with the client and find out the following information:</p><p>The client, Jessica Carpenter, is the founder and CEO of Novelty Food Corp., a company that makes and sells novelty food products. One of Novelty’s most successful products is an ice-cream novelty product called Ice Dots. Ice Dots consist of tiny, frozen beads of ice cream, approximately 3 to 6 mm in diameter, which are dyed different colors. Because the tiny beads of ice cream are frozen, they are “free flowing,” meaning that the beads do not stick together, and can therefore be poured freely into a container when served. </p><p>Ice Dots are typically served at amusement parks and other public venues by vendors using wheeled ice cream carts. The carts consist of a large insulated cooler holding containers of Ice Dots, which vendors can then scoop into paper cups for sale to customers. Reflecting the “high-tech” nature of the ice cream, the carts are decorated with an outer-space theme. The large coolers are painted dark blue and decorated with stars, planets, and rocket ships. The paper cups are similarly decorated, and the carts are attached to large umbrellas shaped in the form of rocket ships. The Ice Dots themselves are dyed two different colors: silver and gold. The product has been extremely successful since its introduction in 1999, and vendors can be found in most of the major amusement parks in the country, as well as in other public venues. </p><p>Carpenter originally discovered the process for creating Ice Dots in 1997. Prior to that time, no such product existed on the market. Carpenter experimented with various methods of freezing ice cream into tiny beads. In early 1997, she successfully discovered a process that allowed the beads to maintain their free-flowing character and not clump together when served. The process consisted of dripping small beads of ice cream into a container of liquid nitrogen, which has a temperature of -320 degrees Fahrenheit. The beads would then be removed from the liquid nitrogen and stored in a freezer, to maintain their free flowing state. </p><p>3 After inventing the basic process, Carpenter tested the product at a local fair during the summer of 1997. Carpenter brought the equipment for making the dots to the fair, created batches of the Ice Dots, and distributed servings to the public for free. Carpenter then asked the fair-goers for their reactions. From the feedback, Carpenter soon learned not to serve the dots immediately after they were created, as the cold temperatures tended to burn the mouths of the customers. Carpenter subsequently made larger batches of the dots and stored them in a cooler until the temperature was closer to -20 F, at which point customers could eat the dots safely.</p><p>Carpenter applied for a patent on the process in September of 1998, and after some back and forth with the PTO, the patent was issued in December of 1999. The primary claim of the patent was as follows:</p><p>1. A method of preparing and storing a free-flowing, frozen alimentary dairy product, comprising the steps of:</p><p> preparing an alimentary composition for freezing; dripping said alimentary composition into a freezing chamber; freezing said dripping alimentary composition into beads having a diameter of between 3 and 6 mm; and storing said beads at a temperature at least as low as -20 F. so as to maintain said beads free-flowing for an extended period of time. </p><p>Initially, Carpenter’s patent application contained no limitation on the size of the frozen beads of ice cream or on the type of food product that could be frozen. The PTO rejected the application in light of a prior patent, which disclosed a very similar method of flash-freezing an alimentary solution of egg product into beads of approximately 2 mm in diameter. The PTO also cited another patent, which disclosed a method of flash- freezing large ice-cream bars to create a crunchy frozen outer layer. In response, Carpenter amended her claim to limit the process to an “alimentary dairy product” and also inserted the size limitation on the frozen beads of ice cream. The PTO subsequently issued the patent.</p><p>In 2001, Novelty Food Corp. decided to expand into the retail market and granted Emil’s Food Products, Inc. a license to use the process to manufacture and sell Ice Dots in pre-packaged form direct to consumers through supermarkets. In exchange, Emil’s agreed to pay Novelty a royalty based on net sales of the products. Emil sold the products as “Emil’s Ice Dots.” By late 2002, however, Novelty Food Corp. began hearing of complaints from consumers that Emil’s Ice Dots often clumped together into large blocks of frozen beads, and were thus more difficult to eat. Novelty Food Corp. learned that this occurred because supermarket freezers were not sufficiently cold to keep the dots in a free-flowing state. Novelty Food Corp. took no immediate action, but refused to renew the license at the end of 2003 and no longer sells direct to customers through supermarkets.</p><p>4 In the Fall of 2004, a company called Dairy Barn, Inc., began selling a product that was nearly identical to Novelty’s product. The new product, which was called Frozen Dots, consisted of tiny, flash-frozen beads of ice cream approximately 5 mm in diameter. Like the Ice Dots, the Frozen Dots were free-flowing. Unlike Ice Dots, however, the Frozen Dots were sold in the freezer section of groceries. Because Frozen Dots had to be kept very cold, they were kept in specially-designed freezers. The freezers and the individual packages of the Frozen Dots were decorated with an outer space theme (e.g. dark blue packaging, stars, rocket ships, etc)., and the Frozen Dots themselves came in two colors: silver and gold.</p><p>Carpenter made various attempts to find out how Dairy Barn was manufacturing its Frozen Dots, but found it difficult to learn much about the process from public sources. Carpenter soon learned that Dairy Barn had recently fired its director of operations. Carpenter contacted the individual, who had been in charge of the production process for Frozen Dots. That individual told Carpenter that Dairy Barn created Frozen Dots by dripping ice cream into a freezing chamber containing liquid nitrogen, thereby producing frozen nuggets of ice cream approximately 30 mm in diameter. The nuggets were then sent through a food mill, which broke down the nuggets into beads of approximately 5 mm in diameter. The beads were then stored below -20 F, in order to keep them free-flowing.</p><p>Carpenter would like to know what possible claims, if any, Novelty Food Corp. may bring against Dairy Barn, and vice versa. Draft a memo for your partner, analyzing any potential claims, along with your preliminary assessment of the strengths and weaknesses of such claims and any potential defenses. If there is any additional specific information that you will need in order to make your assessment, identify that information in your analysis and indicate how it would affect this analysis. (You can assume that the partner will already be familiar with the above facts, after reading your detailed notes of the interview, so there is no need to include a separate section summarizing the above facts.)</p><p>5 QUESTION 2 (33%): (1500 WORDS)</p><p>You are a junior associate at a mid-sized law firm. One evening, just as you are preparing to leave the office, your phone rings. A partner is on the other end of the line. She says that a client of hers will be coming into the office tomorrow morning. The client needs some advice concerning a number of potential legal issues. Unfortunately, the partner is going to be out of town tomorrow morning and will be unable to meet with the client. However, she would like you to meet with the client and find out the nature of the legal issues facing the client. She would also like you to draft a short memo for her, outlining any legal claims that the client could possibly have against other parties or that the other parties could possibly bring against the client, along with your preliminary assessment of the likelihood of success of any of these claims.</p><p>The next morning, you meet with the client and find out the following information:</p><p>The client, Richard Cuthbert, is a folk singer and songwriter. Through most of the 1980s, Cuthbert was part of a folk duo called Cuthbert and Clay. He and his partner, Roberta Clay, wrote and performed folk songs with some degree of success throughout the 1980s, producing four records, all of which sold reasonably well over the years. One record, titled “Meditations,” sold particularly well, hitting number 1 on the folk music sales charts for eight weeks in 1989. </p><p>One of the songs on the “Meditations” record album, titled “Harry’s Trip Home,” received a tremendous amount of airplay on the radio throughout 1989. The song was recorded using only two acoustic guitars performed by Cuthbert and Clay, and poignantly described a trip Cuthbert took back to his small hometown in Arkansas. Cuthbert wrote the lyrics for the song and Clay wrote the tune. The song was not on the original list of songs to be included in the album. However, the two collaborators wrote the song while jamming in between recording sessions for the album, and subsequently included the song in the album.</p><p>All of Cuthbert and Clay’s records were issued by a relatively small, independent record company called Folkways Records, Inc. The contract between Cuthbert, Clay and Folkways was entered into in 1980 and specified that Folkways Records would produce, market, and distribute four record albums by Cuthbert and Clay. The albums would be recorded at Folkways Records’ studio, and Folkways Records would own the copyrights in the sound recordings for these albums. Folkways Records agreed to pay Cuthbert and Clay royalties based on revenue received from sales, performances, and licenses of the records. The contract was silent as to the ownership of the songs themselves.</p><p>In 2004, a punk band named O.B.E. recorded a song called “A Long Way Home,” which was unmistakably based upon “Harry’s Trip Home.” The tune of “A Long Way Home” was identical to the tune of “Harry’s Trip Home.” Indeed, the lead singer of O.B.E. stated in an interview that he expressly chose to base the song on “Harry’s Trip </p><p>6 Home,” which the lead singer called “sentimental tripe.” However, “A Long Way Home” was played in a punk style, at a much faster tempo and at a much louder volume, using electric guitars, drums, and a good deal of distortion. In addition, the lyrics were completely changed. Instead of describing a poignant trip home, the song lyrics criticized the current presidential administration and, in particular, the war in Iraq, by angrily describing the plight of a soldier in Iraq who was a long way from home. When Cuthbert heard “A Long Way Home,” he was extremely upset at what O.B.E. had done with the song.</p><p>In the Fall of 2004, Cuthbert received a letter from a man named Phillip Packer. Packer had recently purchased a copy of the “Meditations” album and had listened to the song “Harry’s Trip Home.” Upon listening to the song, Packer realized that the lyrics closely resembled a poem titled “My Trip Home,” which he had written in 1973, while he was an undergraduate at the University of Oklahoma. The poem had been published in the college’s literary magazine in 1973 and distributed to students on the college campus. (The circulation of the magazine at the time was approximately 5,000). Cuthbert says that he does not recall ever having seen the poem, although he was a student at the University of Oklahoma from 1975 to 1979.</p><p>The subjects of the song and the poem are very similar, both poignantly recounting an individual’s trip back to his hometown after several years away from home. Moreover, the structure of the two works is also very similar, describing the initial anticipation while approaching the home town, initial surprise at how little has changed, a growing realization that all his friends have moved on, and the bittersweet trip away from the home town. Although most of the words in the two works differ, the final stanza of the poem is nearly identical to the final stanza of the song. The poem states: “And so I praisefully repeat, / When angels talk in Heaven above / There are no words more simply sweet / Than Home and Love.” The final stanza of the song states: “And so I now repeat, / When angels talk above / There are no words more sweet / Than home and love.”</p><p>Finally, Cuthbert recently learned that various individuals have been downloading sheet music (i.e. print-outs of musical notation) for many of his songs over the Internet. Although Cuthbert and Clay never sold sheet music for their songs, a number of unknown fans have apparently transcribed the songs into musical notation after listening to the recordings. In particular, sheet music for many of Cuthbert and Clay’s songs is available on a web-site located in South Korea, beyond the reach of U.S. jurisdiction. However, a link to the South Korean website appears on a website run by a California company, FolkShare, Inc. </p><p>The FolkShare website generally caters to folk music fans, and makes most of its money from banner advertisements. The most popular section of the website, titled “Sheet Music,” contains hundreds of links to other sites containing sheet music for songs by various folk music artists, organized by songwriter. (FolkShare’s website itself does not store any sheet music. Rather, the site merely contains links that point users to other websites which contain the sheet music). As far as Cuthbert can tell, nearly all of the linked-to sites contain unauthorized sheet music. The FolkShare “Sheet Music” page </p><p>7 contains a disclaimer at the top that states: “The sheet music links are provided ‘as is’ with no warranties or guarantees. Sheet music is subject to copyright protection (shhh, watch out for the copyright cops), so downloader beware.”</p><p>Draft a memo for your partner, analyzing any potential claims that Cuthbert may be able to bring against others or that others may be able to bring against him, along with your preliminary assessment of the strengths and weaknesses of such claims and any potential defenses. If there is any additional specific information that you will need in order to make your assessment, identify that information in your analysis and indicate how it would affect this analysis. (You can assume that the partner will already be familiar with the above facts, after reading your detailed notes of the interview, so there is no need to include a separate section summarizing the above facts.)</p><p>8 QUESTION 3 (33%): (1200 WORDS)</p><p>For this essay, answer one (and only one) of the questions below. In answering this question, pay particular attention to both the structure of existing law and the policy justifications and various theoretical frameworks that we have discussed during this term.</p><p>A. The useful article doctrine in copyright law attempts to separate protectible non- functional subject matter from unprotectible functional subject matter. Courts applying the law in this area have proposed a number of different tests to help them make this distinction. Critically assess the doctrine in this area, in light of the underlying policies and theories supporting intellectual property law more generally.</p><p>B. As the scope of trademark law has expanded over recent years, it has come into increasing conflict with interests in free expression. Federal courts, in turn, have adopted different approaches to help resolve this conflict. Critically assess these approaches in light of the underlying policies and theories supporting intellectual property law more generally.</p><p>C. Plaintiffs are increasingly turning to state law doctrines in an effort to protect intellectual property, particularly in areas where federal intellectual property laws offer little protection. What role, if any, should state law doctrines play in setting the overall scope of protection for intellectual property more generally?</p><p>9</p>