Intellectual Property - Winter 2002

Intellectual Property Law Exam
Summer 2001 - Richards

Put your exam number on each page of the examination.  Do not put your name or any other identifying information on the examination.  Use no more than the space provided, and not all of the questions require all the space provided.  Use specific case and statute references only as necessary to answer the question.  Do not write on the back - I only read what is on the front.  You may use your book and your notes, but no third party materials.

By taking this exam you are on notice that this exam is covered by the honor code. Violating this rule will result in failure in the class and may result in dismissal from law school.

Fact Pattern 1

The Richards Law Firm (RLF) has determined that lawyers waste a lot of time researching the same points of law in many different cases.  In the good old days this just generated more billable hours.  Now that clients are trying to control legal budgets and bidding out legal work, it no longer makes sense to waste time on duplicative research.  RLF has set up an advanced research and brief bank (Bank) and requires all lawyers in the firm to check the Bank before doing any research, and to carefully update the research each time they do a new project.  The information in the Bank is the product of standard legal research that could be duplicated by another law firm, but at considerable time and expense.  The Bank has a detailed indexing system that is based on standard legal categories cross-referenced to the facts in each case.  To prevent conflicts of interest between clients, the Bank does not contain any confidential client information or communications, only the research with any specific client information blanked out.  Being a high tech firm, the Bank is only maintained electronically and can be searched with a WWW browser (Internet Explorer or Netscape).  Access is carefully controlled with a username and password system.  Each attorney has a unique username based on their last name and first initial, and they must select a password of not less than 6 characters.  The passwords expire every month and the attorney must pick a new one before logging in after the password expires.  RLF has a written secrecy policy that limits access to the Bank to attorneys in the firm and directs them to protect their passwords and to not share them with anyone, including other attorneys in the firm and office staff.  The policy is posted in the lunch room and is displayed on the login screen for the Bank so that the attorneys see it every time they log in.  It also says that the Bank contains trade secrets and the firm will prosecute anyone who misappropriates them.  The firm uses the best available security on its network and WWW search system, and tracks all logins to the Bank and the materials that are viewed.  During the weekly security audit, it is found that there has been an unusual amount of activity under one of the partner's names, which is especially suspicious because he is on vacation in Antarctica with no phones or Internet access.  All the passwords are changed, but a few days later there is the same pattern of activity in another attorney's account, including access to briefs in many areas that the attorney claims he never checked.  A month later, RLF receives a brief from opposing counsel that is identical to a brief in the RLF Bank.  A professional security firm is hired to investigate the security system.  It is found that several attorneys have trouble remembering their passwords so they put them on Post-It® notes on their computer monitors.  It is found that the cleaning staff, who are hired from the local temporary employment agency, Winos-for-Rent, copy these passwords  and sell them to a contract legal research firm. 

1)         The Restatement of Torts lists 6 factors to be considered in determining whether information is a trade secret.  Using these factors, present the arguments pro and con on whether the stolen brief and other information in the Bank is entitled to trade secret protection.  Discuss each factor separately.

2)         Jane worked as an attorney at RLF for 10 years and helped establish the Bank, working on both the indexing system and contributing many of the briefs in the Bank.  She has been hired away by the High Tech Law Firm to set up a brief bank for them.  RLF claims she is improperly using trade secret information and wants to get an injunction to stop her from working for the High Tech Law Firm and to confiscate any notes, computer files of briefs, or other materials she might have on the structure and contents of the Bank.  Write a brief brief on what they might and might not be able to enjoin.  Be specific and present both sides.

3)         RLF is worried that some of their best briefs have been put on the Internet and that they will not be able to use trade secret protection to keep attorneys who have downloaded them from using them in court against RLF or otherwise benefiting from the high quality research and persuasive writing in the RLF briefs.  They ask you to analyze whether they can claim copyright infringement in the briefs and enjoin other attorneys from using them.  They are concerned that the briefs will be customized or paraphrased and want to know how that will affect infringement claims.  Do not worry about possible damages and remedies, only their chance of establishing an infringement claim.

Fact Pattern 2

John, a graduate student in biology, has designed a new drug that looks very promising in the treatment of HIV.  While his computer calculations indicate that it should work, he has not yet completed an animal study to show that it has anti-HIV activity.  He has begun the study, but because he is in a small lab and can only use a small number of animals it will take him 2 more years to complete the study.  As soon as he has positive results he will file a patent application.  He is very careful to protect the confidentiality of his work in the lab and when at professional meetings.  Unfortunately, John has a drinking problem.  When he is drunk he likes to brag about his work, but remembers nothing about this bragging in the morning.  A scientist from MegaLabs overhears John in a bar talking about finding a cure for HIV.  Pulling out his notepad, the scientist starts to buy John drinks and asks him detailed questions about the new drug.  18 months later MegaLabs files a patent for the drug, having used their unlimited resources to complete the necessary animal studies ahead of John.  John then completes his studies and files his patent six months after MegaLabs.

4)            Discuss the priority issues on who gets the patent.

5)         Fearing that the PTO will grant John the patent, MegaLabs hires you to find a way that they can threaten to kill the patent for everyone unless John agrees to assign any rights awarded by the PTO to MegaLabs in return for a substantial payment, but much less than the value of the patent.  What do you advise them is the best strategy?

Fact Pattern 3

Mary wants to enter the fast growing nutritional drinks market.  She formulates a new drink that has all the recommended daily allowances for vitamins and minerals, plenty of calories, and some herbs she claims will make you happy, thin, and strong.  She packages the drink in a square brushed titanium can with a pop top.  While titanium is expensive, it has a distinctive look which she enhances by printing her label in translucent colors over the brushed metal finish.  Titanium is very durable and much more resistant to crushing and scratching than aluminum or steel cans, and, combined with the square shape, it allows much denser packing for shipping than conventional cans.  She calls her drink the Square Meal.  She claims trade dress protection for the can and trademark for the name and wants you to register these with the PTO.

6)         What questions might a skeptical trade mark examiner or potential infringer raise about protecting the name and trade dress of this product and what to you need to show to support Mary's claims?