PROBLEM 1

A. Assuming the invention is patentable, who should receive the patent and why?
Bob Lee should receive the patent. The issue at stake here is novelty. Who invented the car washing
device first? Bob Lee came up with the idea on April 7, 2006, and began work on a prototype on May
7, 2006. Due to his time constraints he was unable to complete a prototype until October 13, 2006 and
filed for a patent on November 16, 2006. Jennifer Cantrell came up with the idea on June 4, 2006, three
days shy of two months after Bob. She began work on July 14th of that year, over two months after
Bob. Because she had more time she was able to complete her prototype on August 3rd, over two
months before Bob, and she filed for a patent on November 10th, 6 days before Bob.
When Bob files his application for a patent on November 16th, the Director of the United States
Patent and Trademark Office would most likely find that his application would interfere with Jennifer's
pending application filed November 10th. Once an interference is declared, the Board of Patent
Appeals and Interferences must determine "questions of priority of the inventions...." (35 U.S.C. § 135
(a)) According to 35 U.S.C. 102 (g) the patent will go to the application deemed to have priority. Bob
conceived the idea first, but was last to reduce the idea to practice. According to subsection (2) of 35
U.S.C. 102 (g) his diligence in pursuing the reduction to practice, from the time Jennifer conceived of
the idea, will be considered. According to Griffith v. Kanamaru the court would look at whether it
would be reasonable for the public to wait the extra time required by Bob to reduce his idea to practice.
The court also considers the reasonable everyday problems and limitations faced by Bob. Considering
that Bob put all of his spare time towards reducing the idea of the car washing system to practice, I
believe it is likely that priority would be found in his patent application, granting him the patent.

B. Can Bob successfully gain control over any of his desired Internet domains? Explain.
Bob can most likely gain control over the swizzler.biz domain name, and may perhaps be able to
gain control of the swizzler.com domain name. The Anticybersquatting Consumer Protection Act, or
ACPA, provides, among other things, a cause of action for registering, trafficking in, or using a domain
name that is identical or confusingly similar to a trademark. A person is liable in a civil action to Bob if
that person has a bad faith intent to profit from his trademark, if it is distinctive at the time the domain
name was registered. When determining whether a person is acting in bad faith, the court looks at many
factors, including nine listed in the statute. Of those nine, several are useful in this case. The court
looks at the trademark or intellectual property rights of the person in the domain name. Whether the
person has used the website previously for bona fide offering of any goods or services. Whether the
person has a bona fide noncommercial or fair use of the website. Whether the person offered to sell,
transfer, or assign the domain name to the trademark owner for financial gain without having used, or
intent to use, the website for bona fide commercial or noncommercial purposes. Finally, the court looks
at how distinctive or famous the trademark is.
Looking at these factors, it is obvious that John Reigel acted in bad faith by registering the
swizzler.biz domain name. He registered the domain name after Bob had acquired the Swizzler
trademark, and by his own account his plan was to sell the domain name to the trademark owner. John
had never used the website to offer any goods or services, and had never used it for any noncommercial
purpose. The issue of whether or not Pete Miller acted in bad faith is a little less clear cut. He did
register the domain name after the trademark was created. He had never used the domain to offer any
goods or services. He never used the website for any noncommercial or fair use. He had also expressed
a past willingness to sell the domain names if offered enough money. He most likely is acting in bad
faith while holding the swizzler.com domain name. Swizzler.net was registered by Sarah Bossert in
2008 and is being used for a legitimate noncommercial purpose. Swizzler.org was registered before
Bob trademarked his Swizzler, even before the Swizzler was created. As such it is not covered by
ACPA.
Under ACPA, § 1125 (d)(1)(C) the court may order the cancellation of both the swizzler.com and
swizzler.biz domain names, or it may order the transfer of either or both to the trademark owner, Bob.

PROBLEM 2
A. Does he (Professor Windbag) have a cause of action under copyright law? Explain.
Professor Windbag does not have a cause of action under copyright law. A copyright provides
protection for literary and artistic expressions. For something to be protected under copyright law, it
must contain a creative expression and it must be fixed in a tangible medium. Without either of these, it
is just an idea. Professor Windbag's lecture, entitled "The Dynamics of Interbeing and Monological
Imperatives in Dick and Jane: A Study in Psychic Transrelational Gender Modes," may contain a
creative expression. Whether it does or not is of no concern, however, because it is not fixed in a
tangible medium. Were his lectures written rather than simply spoken, he may have a copyright in
them. Even if Professor Windbag recorded his lectures and then replayed them, he could have a
copyright in the recorded word. But spoken word is not protected by copyright unless fixed in a
tangible medium. If anyone were to own a copyright in the recordings, it would be Sudointellectuals.
They made the original recordings of the lectures in tangible form on the TinyDisks. To them the only
question would be whether or not there was any creative expression. This situation is similar to a
photograph. The photographer owns the copyright of a photograph because he or she is the one creating
the expression, and saving it in a tangible form. The subject of the photograph has nothing to do with
the copyright. In this case Sudointellectuals would be the photographer and Professor Windbag would
be the subject.

B. From whom does Sudointellectuals need to license the rights to the reports?
Sudointellectuals does not need to license the reports from anyone. Even though the question does
not ask for an explanation, I will provide one. According to § 105 of the Copyright Act, "Copyright
protection under this title is not available for any work of the United States Government, but the United
States Government is not precluded from receiving and holding copyrights transferred to it by
assignment, bequest, or otherwise." This plainly states that government works, including tedious
reports, are not subject to copyright protection. Most likely Sudointellectuals once again owns the
rights to the recordings created as a work for hire by the actor hired to read the reports.

C. What causes of action might TinyDisk assert against Toylander? Against Polly? Is TinyDisk
likely to succeed? Explain.
Kadant, Inc. v. Seeley Machine, Inc. TinyDisk would likely assert a charge of misappropriation of a
trade secret against Toylander for wrongfully acquiring the methodology to record TinyDisks.
TinyDisk would most likely assert the same cause of action against Polly Kettle for wrongfully
disclosing the methodology to record TinyDisks. TinyDisk is likely to succeed in both of these causes
of action. Trade secrets, unlike patents and copyright, are protected under state law. Most states (40)
have adopted the Uniform Trade Secrets Act which serves to protect trade secrets from
misappropriation and provides injunctive relief as well as damages. A trade secret is defined by the Act
as "information, including a formula, pattern, compilation, program, device, method, technique, or
process, that: (i) derives independent economic value, actual or potential, from not being generally
known to, and not being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and(ii) is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy." The methods used to record TinyDisks were very valuable
because they were not generally known, and were under reasonable efforts to maintain secrecy.
Circumstances created a duty in Polly not to disclose the secret. By disclosing it, she acted wrongfully,
and by getting the secret from her, ToyLander acted wrongfully.

D. Does the agreement give TinyDisk any further causes of action against Toylander and Polly?
Is TinyDisk likely to succeed? Explain.
The agreement does not give TinyDisk any further causes of action against Toylander. It does give
TinyDisk one further cause of action against Polly. TinyDisk is likely to succeed on the new breach of
contract cause of action against Polly due to violating the confidentiality clause. The confidentiality
clause will provide further evidence against both Toylander and Polly in the previous trade secret
misappropriation causes. The employment contract between TinyDisk and Polly cannot be the basis for
a cause of action against Toylander. Toylander was not a party to the contract, and is under no
obligation to abide by the contract's noncompete clause. Polly is, however, obliged to abide by the
contract's confidentiality clause. Violating the confidentiality clause would provide for a breach of
contract action.
According to Comprehensive Technologies Intl. v. Software Artisans, Inc., a company is allowed to
dictate whether an employee, after leaving that company's employment, can work for a competing
company within a reasonable time frame. Unfortunately, TinyDisk did not specify a reasonable time for
Polly to not compete against them, and their definition of a competing company is too broad. They
specified that she could never work for any company in the United States that develops equipment for
recording or playing sound or uses such equipment. That is an overly broad definition, and places too
much of a restriction on Polly.

E. Does it (TinyDisk) have any recourse against its competitors for using its technology?
No, TinyDisk has no recourse against its competitors. I assume once again that an explanation would
be appreciated. The Uniform Trade Secrets Act does not codify defenses, but instead relies on
traditional tort defenses in common law. As noted in the comments to the Act, proper means include
reverse engineering, or starting with the known product and working backward to figure out how it was
developed. As long as the party doing the reverse engineering acquired the product in a legitimate
manner, such as from a store, then there is no cause of action.

F. (1) Evaluate George's chance of success in filing a trademark application for the name
"TinyDisk."
Trademark law in the United States is stated in the Lanham Act. The Act defines a trademark as "any
word, name, symbol, or device, or any combination thereof -- (1) used by a person, or (2) which a
person has a bona fide intention to use in commerce..., to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown." The success or failure of George's application for a trademark
depends upon whether he is attempting to trademark the name of his product, the TinyDisk, or the
name of his company, which is also TinyDisk. An attempt to trademark the company name would fail,
because the trademark must directly identify the good itself. The company name would be a trade
name, which normally cannot be registered under the Lanham Act, not a trademark. The main other
restriction would be that the trademark cannot merely be a description of the goods themselves. Though
the disks are tiny, I believe that the name TinyDisk in that form is unique enough to warrant a
trademark.

F. (2) Evaluate George's chance of success of enforcing a trademark against Toylander's use of
the mark "TeenyDisk."
Trademark infringement based on the likelihood of confusion looks at several factors to determine
whether confusion is likely. Those factors include: strength of the mark, proximity of the goods,
similarity of the marks, evidence of actual confusion, marketing channels used, type of goods and the
degree of care likely to be exercised by the purchaser, defendant's intent in selecting the mark, and
likelihood of expansion of the product lines (among other unlisted factors). AMF Incorporated v.
Sleekcraft Boats. In this case, the TinyDisk trademark would appear fairly strong in the field of sound
recordings, though fairly week in other fields. The two goods are essentially identical. When testing the
similarity of the marks, only two letters stand between them, so they are very similar. Evidence of
actual confusion is impossible, because Toylander has not started selling the TeenyDisks yet. Selling
the goods through the same marketing channel would increase likelihood of confusion, and though this
hasn't happened yet, it most likely would. As for the type of goods, both goods are relatively
inexpensive purchases. As such, consumers would be less likely to do research to determine which is
the legitimate disk they are searching for. The intent of Toylander is difficult to ascertain from the
facts, but it appears as if they are hoping to capitalize off of the success of TinyDisk by having a
similar name. Lastly, there is a high likelihood that Toylander would expand to compete with
TinyDisk. Weighing all the factors together, I think it would be highly likely that George would be
successful in his claim of trademark infringment against Toylander.

F. (3) Evaluate George's chance of success of asserting a trademark against his competitors
selling TinyDisk players. What would their defenses be?
George's chance of successfully asserting a trademark infringement claim against his competitors is a
lot worse than his chance against Toylander. His competitors have different goods (TinyDisk's versus
TinyDisk players). It is unlikely that anyone would mistake a TinyDisk player for a TinyDisk. The
most likely claim of TinyDisk would be dilution. Dilution requires that the supposed diluted mark be
famous, and that the use of the same mark on a different type of product would harm the image of the
original mark. I don't believe this theory would work either because the TinyDisk name is not famous
enough, and there is no proof that the manufacturers of the TinyDisk players would hurt TinyDisk. This
would be their defense, that they are not violating the trademark because they are manufacturing a
completely different product.

PROBLEM 3
(1) A script created by taking an existing book and adapting it.
Zack Allen is dealing with copyright law and trademark law. Whoever owns the copyright for which
ever Nancy Drew book Zack chose is entitled to numerous rights, one of which is the right to prepare
derivative works. In order to adapt an existing book, Zack would need the permission of copyright
owner(s) to prepare the derivative (the stage form). The name Nancy Drew is also most likely
trademarked. If Zack chose to use the name Nancy Drew in the title of his play, or for the character in
his play, he would be liable for trademark infringement to the trademark owner. This liability would
probably be based on dilution or confusion.

(2) A script created by writing a new mystery story involving the Nancy Drew character.
In this case Zack would be dealing only with trademark law. Copyright law does not give the
copyright holder the exclusive right to use the name Nancy Drew. Simply using the same name would
be okay if it weren't trademarked. If Zack writes the new mystery and uses the Nancy Drew name, he
would be liable to the trademark owner.

(3) A script created by writing a new story about a "Nancy Drew Fan Club" that solves a
mystery by asking "What would Nancy do?"
In this case Zack may still be liable for trademark infringement through dilution, or even confusion
as to source or sponsorship. Even though he is not using the Nancy Drew character, people could still
be confused as to whether or not his play is officially a Nancy Drew product. And he could still face
charges of dilution because of how famous the Nancy Drew trademark is, and the potential for him to
damage its image.

PROBLEM 4
Discuss relevant legal and policy issues surrounding the proposed amendment and suggest
whether to vote in favor or against.
Trademark law is designed to protect both trademark owners and consumers. Consumers expect
names to be indicative of quality, and in some instances, origin. The amendment seems to serve
primarily the interests of consumers, making sure that when they buy Jack Daniel's Tennessee Whiskey
that it is actually made in Tennessee. Though the consumer protection might be beneficial, the legal
requirements this amendment imposes on trademark owners could be too onerous. Trademarks are
designed to protect a company's name that it has put substantial money and time into crafting. If a state
passes new legislature that makes that industry no longer viable in that state, should the company be
forced to lose all its resources put into building a brand? Generally I favor consumer protection over
that of industry, but in this case I would suggest to vote against the amendment. Perhaps a better
amendment would require a company to print the origin of a product, although I believe that
requirement already exists.