Deck 17: Protecting and Licensing Intellectual Property

Question 1

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

Answer 1

True

Question 2

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.

Answer 2

False

Question 3

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.

Answer 3

False

Question 4

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

Question 5

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 6

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

Question 7

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

Question 8

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

Question 9

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

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

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 12

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

Question 13

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 14

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

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

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

Question 17

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

Question 18

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 19

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

Question 20

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

Question 21

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

Question 22

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

Question 23

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

Question 24

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 25

The importation of foreign-made trademarked merchandise into the U.S. for sale in competition with the U.S. trademark owner's own merchandise made in the U.S. is referred to as:

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

Question 26

​ Which of the following represent th e thre e regulator y scheme s fo r a technolog y transfe r agreemen t rang e fro m leas t prohibitiv e t o mos t prohibitiv e?

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 27

Many technology owners have avoided introducing technology or technological products into Brazil because:

A) the market has been too weak to support these high-tech products.
B) technology transfer agreements have been interpreted under Brazilian law so that the original owner loses many rights in the technology.
C) Brazilian taxes on the introduction of technology into the country have been prohibitively high.
D) spies and foreign agents have been stealing the technology and selling it to the communist countries.

Question 28

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 29

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 the above

Question 30

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

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 A and B.
D) neither A nor B.

Question 32

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

Question 33

Under TRIPS, a nation may decide to exclude pharmaceutical patents if it determines they are immoral.

Question 34

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 35

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 36

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.
E) all of the above.

Question 37

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

Question 38

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 the above.

Question 39

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 40

The impact of piracy on the revenue loss as estimated by the Motion Picture Association of America is approximately $1.5 billion per year.

Question 41

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

Question 42

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) A, B, and C.

Question 43

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

A) Non-infringement
B) Invalidity
C) Unenforceability
D) All of the above

Question 44

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 45

Which of the following is not of the thre e type s o f regulator y scheme s fo r transfe r agreement s ?

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

Question 46

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

Question 47

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 the above.

Question 48

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 49

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 the above.

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

Intellectua l propert y right s i n som e countrie s ar e no t protecte d 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 the above.

Question 52

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 the above.

Question 53

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 54

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

Question 55

Th e concep t o f languag e politic s i n system s franchis e agreement s refer s 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 the above.

Question 56

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 57

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 58

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

Question 59

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 the above.

Question 60

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 61

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 62

Draf t a bil l t o addres s th e proble m o f gra y marke t good s o r tha t which enact s th e Leve r Rul e ( student s are expected t o do external researc h regardin g th e Leve r Rule).

Question 63

Creat e a structur e o r standard s fo r a n onlin e internationa l disput e resolutio n foru m that handl es IP R issues.

Question 64

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?