Deck 17: Protection and Licensing of Intellectual Property

Question 1

Transfer of technology laws are U.S.statutes that require U.S.companies to share their technology and research with firms in Africa.

Answer 1

False

Question 2

Licensees of IPRs are generally eager to operate under specific marketing quotas requested by the licensor.

Answer 2

False

Question 3

A field of use limitation in a licensing agreement restricts the licensee's ability to market in certain geographical areas.

Answer 3

False

Question 4

Most international licensing agreements mandate the licensee to maintain the confidentiality of the licensor's technology.

Question 5

In the licensing agreement the licensor would set the geographic and field-of-use limitations on licensees.

Question 6

Governments in developing countries usually encourage the use of licensed intellectual property by diligently enforcing laws designed to protect it from theft or other means of exploitation.

Question 7

IPRs include patents,trademarks,and copyright,but not trade secrets.

Question 8

Licensors of IPRs are generally wary of offering licensees exclusive rights in a certain geographic area.

Question 9

U.S.courts have been reluctant to restrict gray market competition in situations where the product's quality being introduced to the home market is indistinguishable from its native counterpart.

Question 10

IPR transfers from U.S.companies to joint ventures in developing countries often allow U.S.companies to avoid the legal risks and entanglements of direct investment.

Question 11

The greatest protection for a firm's copyrights and patents comes from the International Convention for the Protection of Industrial Property.

Question 12

Foreign laws that require the government approval of a licensing agreement are a form of protectionist policy.

Question 13

The great advantage of the International Convention for the Protection of Industrial Property is that by filing a trademark with this international body,the trademark owner achieves virtually worldwide trademark protection.

Question 14

The Council of the European Union has jurisdiction over franchise agreements operating in its member countries.

Question 15

Under TRIPS,until a pharmaceutical patent is actually granted,a country has no obligation to protect potential prospective rights (during the pendency of the patent application).

Question 16

Many technology transfer agreements prevent the licensee from selling goods to persons that will bring the product back to the licensor's country for sale in direct competition with the licensor.

Question 17

A licensee will seek a grant back of ownership in improvements to the licensor.

Question 18

When the intellectual property being licensed is technology protected primarily by a patent,a key license provision will be a clause setting forth the licensee's obligation to keep the licensed technology confidential.

Question 19

Restrictions written into the franchise agreement must be strictly adhered to regardless of the effects it may have on the competitive potential of the franchisee in the host country.

Question 20

The European Union has both a common multinational patent application process as well as the individual country processes.

Question 21

Importation of merchandise produced and sold abroad and then imported back into the United States for sale in competition with the U.S.trademark owner is referred to counterfeit goods.

Question 22

The Copyright Term Extension Act of 1998 was intended to protect key industries in the U.S.,including the:

A) computer industry.
B) film industry.
C) construction industry.
D) appliance industry.

Question 23

Copyright protection for works of authorship available through the Internet is expressly provided by:

A) The Berne Convention.
B) The WIPO Copyright Treaty.
C) The TRIPS Agreement.
D) none of these are correct.

Question 24

Under U.S.copyright law,an author's exclusive rights end upon his/her demise.

Question 25

Computer programs are protected as copyrightable literary works under the Berne Convention.

Question 26

Which of the following regulatory schemes for technology transfer agreements is most indicative of a protectionist government policy?

A) Preapproval
B) Notification/registration
C) No regulation
D) None of these are correct

Question 27

A U.S.-located college textbook manufacturer produces its copyrighted/trademarked biology textbook for sale in the U.S.It licenses an English-language version of the textbook to a manufacturer in India for sale.The Indian company produces the textbook and ships it to the U.S.for sale at a much lower price than the price offered by the U.S.company.This is referred to as:

A) copycat competition.
B) gray marketing.
C) reverse trade advantage.
D) black marketing.

Question 28

Most nations grant patent priority to the individual who can prove (s)he was the first to invent.

Question 29

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)requires developing countries that are members of the WTO to adopt intellectual property laws similar to the United States.

Question 30

A.Bourjois & Co.v.Katzel involved the question of whether Katzel:

A) was liable to Bourjois for breach of contract.
B) was liable to the French subsidiary of Bourjois for trademark infringement and counterfeiting.
C) was entitled to punitive damages for willful trademark infringement.
D) was liable to Bourjois for trademark infringement.

Question 31

Under a bilateral agreement concluded in 1994 between the U.S.and the EU:

A) U.S.-made liquor can be branded as "scotch whisky," or "cognac."
B) EU made liquor can be branded as "bourbon" or "Tennessee whiskey."
C) both of these are correct.
D) neither of these is correct.

Question 32

Foreign laws that require the disclosure of the ingredients of formulas of trade secrets to determine the safety of the product before entry is granted is a legitimate government regulation under its police powers i.e.health and safety.

Question 33

Since 1996,the European Union's Trademark Regulation has allowed a single trademark registration enforceable in all members of the European Union.

Question 34

Both the Berne Convention and the Paris Convention require signatory countries to enact certain minimum substantive laws.

Question 35

A single multinational application process is available for protecting intellectual property in:

A) in the U.S., Canada, and Mexico.
B) in the Eastern European countries.
C) in countries that are member of the Asian Patent Protection Treaty.
D) in the European Union.

Question 36

The impact of piracy on the revenue loss to American companies to counterfeit goods is estimated to be is $250 billion annually.

Question 37

The EU departs from general American intellectual property law and bans the trademark registration of geographical indications.

Question 38

The Paris Convention gives a trademark holder in any signatory country a "right of priority."

Question 39

Which of the following represent the three regulatory schemes for a technology transfer agreement range from least prohibitive to most prohibitive?

A) Notification/registration, no regulation, preapproval
B) Preapproval, notification/registration, no regulation
C) No regulation, notification/registration, preapproval
D) No regulation, preapproval, notification/registration

Question 40

The European Court of Justice in the Sebago Inc.v.GB Unic,SA,(1999)E.T.M.R.681 ruled that re-imports from a EU member country to another is in violation of the Trademark Directive.

Question 41

When a person registers a domain name with the intent to profit from the goodwill of a trademark belonging to another,it is called:

A) domain assumption.
B) cybersquatting.
C) domain preemption.
D) bad faith registration.

Question 42

Compare and contrast attitudes toward technology transfers in the developed countries,developing countries,and countries strongly influenced by Marxist ideology.

Question 43

Which of the following is not of the three types of regulatory schemes for transfer agreements?

A) Preapproval
B) Notification/registration
C) No regulation
D) All are types of regulatory schemes

Question 44

What defense can an accused party use when accused of IP infringement?

A) Non-infringement
B) Invalidity
C) Unenforceability
D) All of these are correct

Question 45

The concept of language politics in systems franchise agreements refers to:

A) the legal system's primary language must be recognized.
B) a country that requires a certain language to be used to conduct business in a certain region.
C) efforts to incorporate the home country's language into standard business practice of the host country are extensive.
D) none of these are correct.

Question 46

Among the recent legal and technological issues reported in the WIPO magazine available on-line,which do you believe are the most important for the U.S.? Assess their relative importance to other countries.

Question 47

Compare and contrast the risks of international licensing to a company versus those associated with trading goods.

Question 48

The TRIPS Agreement:

A) became effective July 1, 1995.
B) promises to create a more effective international system for protection of IPRs.
C) requires every member of the WTO to abide by the Paris Convention and the Uniform Copyright Convention.
D) All of these are correct.

Question 49

Lindsey and Martin Smith of Ontario,Canada,have paid McDonald's a fee for limited permission to use its trademarks,copyrights,and know-how in running a fast-food restaurant in Ontario for the next five years.The Smiths have purchased a(n):

A) license.
B) royalty.
C) IPR.
D) none of these are correct.

Question 50

When it seems likely that a licensee may develop improvements in the licensed technology,a licensor may wish to include a ____ in the license agreement.

A) grant back provision
B) field use provision
C) technology transfer
D) promise of confidentiality

Question 51

Company A wants to use some technology that Company B has developed,so Company A pays Company B a license fee,called a(n):

A) permission fee.
B) royalty.
C) IPR.
D) rights payment.

Question 52

The type of arrangement in which the licensor permits the licensee to sell certain goods under the licensor's trademark or logo is called:

A) trademark lease agreement.
B) shared benefit agreements.
C) franchise agreement.
D) none of these are correct.

Question 53

Develop a document that proposes international standards for trademark licensing or use by a subsidiary (or sale to a third party)of copyrighted material.

Question 54

Assess the relative merits of producing a new product or technology abroad as opposed to domestically.

Question 55

Intellectual property rights in some countries are not protected because:

A) some countries actually encourage their citizens to violate the property rights of foreigners because it is economically advantageous to do so.
B) some countries that have intellectual property laws fail to enforce them.
C) some countries enforce their intellectual property laws in a discriminatory fashion.
D) all of these are correct.

Question 56

Compare and contrast TRIPS with IPR in the U.S.or another country (for example,India).

Question 57

Transfer agreements in Japan and some newly developed countries such as Korea require:

A) approval by the government.
B) negotiation between the foreign licensor and the government.
C) notification to the government.
D) assurance that the agreement has not be entered into corruptly.

Question 58

TRIPS requires every member of the World Trade Organization to:

A) abide by the Paris Convention.
B) abide by the Berne Convention.
C) apply national treatment to foreign owners of intellectual property rights.
D) provide patent protection for processes.
E) all of these are correct.

Question 59

Common restrictions imposed on the use of technology include geographic limitations on the licensee's manufacturing and/or marketing activities.These types of restrictions are also known as:

A) field of use limitations.
B) non-technical limitations.
C) operating limitations.
D) implied effort of cooperation limitations.

Question 60

Which of the following is true about fair,reasonable,and nondiscriminatory (FRAND)licensing terms?

A) FRAND licensing applies only in limited circumstances.
B) FRAND licensing has curbed litigation in a meaningful way.
C) FRAND licensing is not practiced in the U.S.
D) None of these are correct.

Question 61

Draft a bill to address the problem of gray market goods or that which enacts the Lever Rule (students are expected to do external research regarding the Lever Rule).

Question 62

Exhibit 17-1
Accuraphoto USA (AUSA) owns the "Accuraphoto" trademark in the United States. AUSA produces the "SureShot" camera, which is known to consumers as a moderately priced quality product. AUSA entered into a contract with Honshu Photographic, Inc. (HPI), a Japanese corporation. Pursuant to the terms of the contract, HPI was permitted to manufacture and market "SureShot" cameras utilizing the "Accuraphoto" trademark in return for payment of royalties based upon a percentage of HPI's sales. After producing "SureShot" cameras for a short time at its Japanese facility, HPI moved production to its facility in the Philippines in order to reduce labor costs. The cameras produced at the Philippine facility utilized the "Accuraphoto" trademark but were marketed under the name "SharpShot." Additionally, these cameras contained improved electronic features incorporated into the product by HPI engineers. Despite the inclusion of these improvements, "SharpShot" cameras proved to be of inferior quality. Furthermore, "SharpShot" cameras have begun to show up on the shelves of U.S. discount retailers such as K-Mart and Wal-Mart. Additionally, several "SharpShot" cameras have been sent by American consumers to AUSA's American facilities for repair. Finally, HPI has refused to share access with AUSA to the electronic improvements incorporated into the "SharpShot" on the basis that they are confidential proprietary information.
Refer to Exhibit 17-1.What remedies may AUSA seek against HPI as a result of its conduct? What do these remedies provide?

Question 63

Exhibit 17-1
Accuraphoto USA (AUSA) owns the "Accuraphoto" trademark in the United States. AUSA produces the "SureShot" camera, which is known to consumers as a moderately priced quality product. AUSA entered into a contract with Honshu Photographic, Inc. (HPI), a Japanese corporation. Pursuant to the terms of the contract, HPI was permitted to manufacture and market "SureShot" cameras utilizing the "Accuraphoto" trademark in return for payment of royalties based upon a percentage of HPI's sales. After producing "SureShot" cameras for a short time at its Japanese facility, HPI moved production to its facility in the Philippines in order to reduce labor costs. The cameras produced at the Philippine facility utilized the "Accuraphoto" trademark but were marketed under the name "SharpShot." Additionally, these cameras contained improved electronic features incorporated into the product by HPI engineers. Despite the inclusion of these improvements, "SharpShot" cameras proved to be of inferior quality. Furthermore, "SharpShot" cameras have begun to show up on the shelves of U.S. discount retailers such as K-Mart and Wal-Mart. Additionally, several "SharpShot" cameras have been sent by American consumers to AUSA's American facilities for repair. Finally, HPI has refused to share access with AUSA to the electronic improvements incorporated into the "SharpShot" on the basis that they are confidential proprietary information.
Refer to Exhibit 17-1.What terms could AUSA have included in its contract with HPI that could have avoided this legal morass?

Question 64

Create a structure or standards for an online international dispute resolution forum that handles IPR issues.