Deck 10: Intellectual Property Rights and the Internet

Question 1

Multicomp Company wishes to protect software it has developed. It is concerned about others copying this software and taking away some of its profits. Which of the following is true concerning the current state of the law?
a. Computer software is generally copyrightable.
b. To receive protection, the software must have a conspicuous copyright notice.
c. Software in human readable source code is copyrightable but machine language object code is not.
d. Software can be copyrighted for a period not to exceed 20 years.

Answer 1

a. True. Computer software is copyrightable. In fact, code for a program and its important functions code can be protected. Enforcement is given by laws such as Computer Software Copyright Act (CSPA) and Digital Millennium Copyright Act (DMCA)
b. False. A conspicuous copyright notice is not required to claim copyright protection, as long as the software was original and innovative when created. However, having such notice grants better protection.
c. False. Software written in source code and machine language code is copyrightable. E.g. translating a copyrighted work in another language doesn't dissolve the copyright protection.
d. False. The copyright limit of USA is life of the author + 70 years. This exceeds 20 years.

Question 2

China is a signatory country to the Madrid Protocol on the international registration of trademarks. Starbucks opened its first cafe´ in China in 1999 and has added outlets in numerous locations including Shanghai and at the Great Wall and the imperial palace in Beijing. Xingbake Cafe´ Corp. Ltd. has imitated the designs of Starbuck's cafe´s in its business coffee cafe´ locations in Shanghai. Xing (pronounced "Shing") means star, and bake, or "bak kuh" is pronounced like "bucks." Does the Seattle, Washington, Starbucks Corporation have standing to bring suit in China against Xingbake Cafe´ Corp. Ltd? If so, on what theory? Decide. (Boston Globe, January 3, 2006, 1)

Answer 2

As per the stated case, XC Corp. Ltd. was found to be imitating the designs of S café locations in city S.
In light of the case, three parties, that is, S, W, S Corporation have a clear standing to bring suit in country C against XC Corp. Ltd. since the company violated the US Trademark law.
As per the US Trademark Law, a person, company or institution that is found imitating the trademark (symbols, designs, color, shape, size) of other company would face serious legal actions and in extreme cases may face strict imprisonment.
Moreover, the plaintiff has to prove that his/her company has a valid design and they were the first one who created the designs. Hence, another's use of the same design would likely to cause confusion to consumers.
In such a scenario, parties like S, W and S Corporation would be liable to bring suit against the XC Corp.

Question 3

Which of the following is not correct concerning computer software purchased by Gultch Company from Softtouch Company? Softtouch originally created this software.
a. Gultch can make backup copies in case of machine failure.
b. Softtouch can typically copyright its software for at least 75 years.
c. If the software consists of compiled computer databases, it cannot be copyrighted.
d. Computer programs are generally copyrightable.

Answer 3

Refer to "Copyright Law of the United States" for part a and b, this publication is downloadable from www.copyright.gov to answer questions as below. These answer used the 2011 version.
a) True. Refer to section 117 "Limitations on Exclusive Rights: Computer Programs" a2, allows for the copying of a purchased software for back up and in case of machine needed for repair.
b) True. Refer to chapter 3 Duration of copyright. Most of the copyright of software works created after January 1, 1978 (section 302) gives life of author + 70 years. These are sufficient for 75 year duration.
c) False. Refer to ruling on Feist v. Rural (499 U.S. 340). While, a database itself is generally not copyrightable it doesn't exclude all databases from copyright protection. There just need to be some sort of creativity in displaying the database.
d) True. Computer programs that are original works can be copyrightable.

Question 4

Cable News Network with its principal place of business in Atlanta, Georgia, is the owner of the trademark CNN in connection with providing news and information services to people worldwide through cable and satellite television networks, Web sites, and news services. Its services are also available worldwide on the Internet at the domain name CNN.com. Maya Online Broadband Network (Maya HK) is a Chinese company. It registered the domain name CNNEWS.com with Network Solutions, Inc. The CNNews.com Web site was designed to provide news and information to Chinese-speaking individuals worldwide, making significant use of the terms CNNews and CNNews.com as brand names and logos that the Atlanta company contends resembles its logos. Maya HK has admitted that CNNews in fact stands for China Network News abbreviated as CNN. The Atlanta company had notified Maya HK of its legal right to the CNN mark before the Chinese company registered the CNNews.com domain name. Does the federal Anticybersquatting Consumer Protection Act apply to this case? If so, does a "safe harbor" exist under the ACPA for Maya HK in that most people who access its Web site in China have never heard of CNN? Decide. [Cable News Network v CNN News.com, 177 F Supp 2d 506 (ED Va)]

Question 5

Using his computer, Professor Bell makes 15 copies (to distribute to his accounting class) of a database in some software he has purchased for his personal research. The creator of this software is claiming copyright. Which of the following is correct?
a. This is an infringement of copyright, since he bought the software for personal use.
b. This is not an infringement of copyright, since databases cannot be copyrighted.
c. This is not an infringement of copyright because the copies were made using a computer.
d. This is not an infringement of copyright because of the fair use doctrine.

Question 6

Banion manufacturers semiconductor chips. He wants to obtain protection for his mask works under federal law, particularly so that competitors will be prohibited from reverse engineering these works. Advise Banion of his legal options, if any, to accomplish his objective.

Question 7

Intellectual property rights included in software may be protected under which of the following? a. Patent law
b. Copyright law
c. Both of the above
d. None of the above

Question 8

Jim and Eric work for Audio Visual Services (AVS) at Cramer University in Casper, Wyoming. For "expenses" of $5, Jim and Eric used AVS facilities after hours to burn discs of Pearl Jam's CD Vitology for 25 friends or friends of friends from school. When Mrs. Mullen, who is in charge of AVS, discovered this and confronted them, Jim, a classics major, defended their actions, telling her, "It's de minimus... I mean, who cares?" Explain to Jim and Eric the legal and ethical ramifications of their actions.

Question 9

Sullivan sold t-shirts with the name Boston Marathon and the year of the race imprinted on them. The Boston Athletic Association (BAA) sponsors and administers the Boston Marathon and has used the name Boston Marathon since 1917. The BAA registered the name Boston Marathon on the Principal Register. In 1986, the BAA entered into an exclusive license with Image, Inc., to use its service mark on shirts and other apparel. Thereafter, when Sullivan continued to sell shirts imprinted with the name Boston Marathon, the BAA sought an injunction. Sullivan's defense was that the general public was not being misled into thinking that his shirts were officially sponsored by the BAA. Without this confusion of source, he contended, no injunction should be issued. Decide. [Boston Athletic Ass'n v Sullivan, 867 F2d 22 (1st Cir)]

Question 10

The University of Georgia Athletic Association (UGAA) brought suit against beer wholesaler Bill Laite for marketing Battlin' Bulldog Beer. The UGAA claimed that the cans infringed its symbol for its athletic teams. The symbol, which depicted an English Bulldog wearing a sweater with a G and the word BULLDOGS on it, had been registered as a service mark. Soon after the beer appeared on the market, the university received telephone calls from friends of the university who were concerned that Battlin' Bulldog Beer was not the sort of product that should in any way be related to the University of Georgia. The university's suit was based on the theory of false designation of origin in violation of the Lanham Act. Laite contended that there was no likelihood of confusion because his bulldog was different from the university's and his cans bore the disclaimer "Not associated with the University of Georgia." Decide. [University of Georgia Athletic Ass'n v Laite, 756 F2d 1535 (11th Cir)]

Question 11

Twentieth Century Fox (Fox) owned and distributed the successful motion picture The Commitments. The film tells the story of a group of young Irish men and women who form a soul music band. In the film, the leader of the band, Jimmy, tries to teach the band members what it takes to be successful soul music performers. Toward that end, Jimmy shows the band members a videotape of James Brown's energetic performance of the song "Please, Please, Please." This performance came from Brown's appearance in 1965 on a television program called the TAMI Show. Portions of the 1965 performance are shown in The Commitments in seven separate "cuts" for a total of 27 seconds. Sometimes the cuts are in the background of a scene, and sometimes they occupy the entire screen. Brown's name is not mentioned at all during these relatively brief cuts. His name is mentioned only once later in the film, when Jimmy urges the band members to abandon their current musical interests and tune in to the great soul performers, including James Brown: "Listen, from now on I don't want you listening to Guns Roses and The Soup Dragons. I want you on a strict diet of soul. James Brown for the growls, Otis Redding for the moans, Smokey Robinson for the whines, and Aretha for the whole lot put together." Would it be fair use under U.S. copyright law for Fox to use just 27 seconds of James Brown cuts in the film without formally obtaining permission to use the cuts? Advise Fox as to what, if anything, would be necessary to protect it from a lawsuit. [See Brown v Twentieth Century Fox Film Corp., 799 F Supp 166 (DDC)]

Question 12

The Greenwich Bank Trust Co. (GB T) opened in 1998 and by 2008 had expanded to a total of four branches in the Greenwich, Connecticut, community of 62,000 residents. A competitor using the name Bank of Greenwich (BOG) opened in December 2006. GB T's parent entity sued BOG for trademark violation under the Lanham Act. BOG argued that GB T's service mark is generic and is simply not entitled to Lanham Act protection because it combines the generic term "bank" and the geographic term "Greenwich." GB T asserted that it had been the only bank in Greenwich using the word Greenwich in its name and had done so exclusively for nine years. It asserted that a geographic term is entitled to protection if it acquires secondary meaning. GB T introduced evidence regarding its advertising expenditures, sales success, and length of exclusivity of use along with evidence of actual consumer confusion. Decide. [Connecticut Community Bank v The Bank of Greenwich, 578 F Supp 2d 405 (D Conn 2008)].

Question 13

The menu commands on the Lotus 1-2-3 spreadsheet program enable users to perform accounting functions by using such commands as "Copy," "Print," and "Quit." Borland International, Inc., released its Quattro spreadsheet, a program superior to Lotus 1-2-3 that did, however, use an identical copy of the entire Lotus 1-2-3 menu tree but did not copy any of Lotus's computer code. Lotus believed that its copyright in Lotus 1-2-3 had been violated. Borland insisted that the Lotus menu command was not copyrightable because it is a method of operation foreclosed from protection under Section 102(b) of the Copyright Act of 1976. Decide. [Lotus Development Corp. v Borland International, Inc., 49 F3d 807 (1st Cir), aff'd, 516 US 233]

Question 14

Diehr devised a computerized process for curing rubber that was based on a well-known mathematical formula related to the cure time, and he devised numerous other steps in his synthetic rubber-curing process. The patent examiner determined that because abstract ideas, the laws of nature, and mathematical formulas are not patentable subject matter, the process in this case (based on a known mathematical formula) was also not patentable. Diehr contended that all of the steps in his rubber-curing process were new and not obvious to the art of rubber curing. He contended also that he did not seek an exclusive patent on the mathematical formula, except for its use in the rubber-curing process. Decide. [Diamond v Diehr, 450 US 175]

Question 15

Aries Information Systems, Inc., develops and markets computer software specifically designed to meet the financial accounting and reporting requirements of such public bodies as school districts and county governments. One of Aries's principal products is the POBAS III accounting program. Pacific Management Systems Corporation was organized by Scott Dahmer, John Laugan, and Roman Rowan for marketing a financial accounting and budgeting system known as FAMIS. Dahmer, Laugan, and Rowan were Aries employees before, during, and shortly after they organized Pacific. As employees, they each gained access to Aries's software materials (including the POBAS III system) and had information about Aries's existing and prospective clients. Proprietary notices appeared on every client contract, source code list, and magnetic tape. Dahmer, Laugan, and Rowan signed an Employee Confidential Information Agreement after beginning employment with Aries. While still employees of Aries, they submitted a bid on behalf of Pacific to Rock County and were awarded the contract. Pacific's FAMIS software system is substantially identical to Aries's proprietary POBAS III system. Aries sued Pacific to recover damages for misappropriation of its trade secrets. Pacific's defense was that no "secrets" were misappropriated because many employees knew the information in question. Decide. [Aries Information Systems, Inc. v Pacific Management Systems Corp.,366 NW2d 366 (Minn App)]

Question 16

The plaintiff, Herbert Rosenthal Jewelry Corporation, and the defendant, Kalpakian, manufactured jewelry. The plaintiff obtained a copyright registration of a jeweled pin in the shape of a bee. Kalpakian made a similar pin. Rosenthal sued Kalpakian for infringement of copyright registration. Kalpakian raised the defense that he was only copying the idea, not the way the idea was expressed. Was he liable for infringement of the plaintiff's copyright? [Herbert Rosenthal Jewelry Corp. v Kalpakian, 446 F2d 738 (9th Cir)]

Question 17

Mineral Deposits, Ltd. (MD, Ltd.), an Australian company, manufactures the Reichert Spiral, a device used for recovering gold particles from sand and gravel. The spiral was patented in Australia, and MD, Ltd., had applied for a patent in the United States. Theodore Zigan contacted MD, Ltd., stating he was interested in purchasing up to 200 devices for use in his gravel pit.MD, Ltd., agreed to lend Zigan a spiral for testing its efficiency. Zigan made molds of the spiral's components and proceeded to manufacture 170 copies of the device. When MD, Ltd., found out that copies were being made, it demanded the return of the spiral. MD, Ltd., also sought lost profits for the 170 spirals manufactured by Zigan. Recovery was sought on a theory of misappropriation of trade secrets. Zigan offered to pay for the spiral lent him by MD, Ltd. He argued that trade secret protection was lost by the public sale of the spiral. What ethical values are involved? Was Zigan's conduct a violation of trade secret law? [Mineral Deposits, Ltd. v Zigan, 773 P2d 609 (Colo App)]

Question 18

Village Voice Media, owners of the famous Village Voice newspaper in New York City, sent a letter to The Cape Cod Voice, a year-old publication located in Orleans, Massachusetts, objecting to the use of the word Voice in the title of its publication. It warned that the Cape Cod publication could cause "confusion as to the source affiliation with the famous Village Voice marks." The publisher of The Cape Cod Voice responded that "small places have a right to their own voices." The use of the word Voice was thus in dispute between these parties. Would you classify it as generic, descriptive, suggestive, arbitrary, or fanciful? How would you resolve this controversy? [Cape Cod Times Business Section, Amy Zipkin, The New York Times, October 16, 2004, G-1].