Some Exam-Taking Mistakes Introduction to Intellectual Property Prof.

Post A frequent cause for complaint from law students comes from those who feel that they mastered the material presented in the class, and that they have learned how to think like a lawyer, but who are disappointed when they do poorly on the exam. It is disturbing, to you and to me, when that happens. It reflects something important about the study of law, however. The problem you face is that you need to learn not only how to think like a lawyer, as difficult as that may be; you also need to learn how to communicate to others that you are doing so, i.e. to write like a lawyer. Exam-taking is an exercise in both skills. Understanding that a patent cannot issue if the invention was in public use more than 1 year prior to filing the patent application, and understanding something about what public use means, and that the public use must be of a device/process containing all of the elements of the invention claimed in the application all that is terrific. But I do not have access to your brain I have access only to the words you put on the page, and if those words dont communicate to me that you understand those things, I cant know that, in fact, you do. There are some common communication problems Ive encountered on exams, and Ive tried below to organize them below. The examples are all from actual answers to my Fall 2009 Introduction to Intellectual Property Exam, which is attached at the end of this memo. 1. The Improper Conclusion It is very, very rare, on a law school exam (or, for that matter, in the practice of law) that you can answer a question conclusively one way or the other based on the facts presented. We are, therefore, never looking for the right answer to the question posed (e.g., Jones has a cause of action for copyright infringement against Smith, or Ellens patent is invalid for obviousness, or the like). Instead, what were looking for, always, is your explanation of what you can and what you cant say about the problem given the facts presented, and an indication of the additional facts that would help you answer the question (and how those facts would help you do so). While there are rarely any right answers, there are many wrong answers. It is wrong wrong as in grounds for malpractice if this were real life wrong to say that Jones has a cause of action for infringement against Smith when the facts are incomplete in relevant ways: when, for instance, you dont know for certain whether Jones is or is not the copyright

owner, or when you dont know whether it was in fact Smith who performed the acts constituting the infringement. Most of you understand this quite well, but many have trouble communicating it on exams. Please stop here and read over the facts for Question 2 from the 2009 Exam (attached) before proceeding. The ultimate issue (as virtually everyone realized) is whether Woods has a cause of action for copyright infringement against Searchlight Pictures. This turns, in part, on whether he has some copyright ownership interest in the motion picture (or any part of the motion picture). Heres an answer I received on this question, reproduced verbatim. Ive emphasized certain things this student wrote in bold. My comments are in the margin. *********** First, In order to prevent distribution of the film, Woods has to own the in the film, because 501 only gives the owner of the the right to file suit, which is how Woods would stop distribution. Does Woods own the ? In order to sue for infringement, Woods must own the -- or, more precisely, Woods must be the legal or beneficial owner of an exclusive right under a and therefore entitled to sue for infringement (501(b)). Initially, under 201, the author is the owner. There are three ways to be an author: creator of the work, under the work for hire (WFH) doctrine, or as a joint author. Here Woods only contributed 4 additional scenes and worked on some others. Assuming the facts necessary to ensure that subsists in the 4 scenes (OWAFTME), Woods could only possibly own the copyright in those scenes, and maybe the others he worked on if he was the author of those scenes. The 4 scenes: Based on the fact that Woods was "hired" by FS, he may be an employee of FS. If he is, the WFH doctrine applies and FS owns those scenes. In order to determine if Woods is an employee, we use the common law agency definition of employee. First, we consider FS's right to control the manner and means by which the scenes were written, as well as many other factors. I don't have very

Comment [DGP1]: Very good so far. Comment [DGP2]: [Notice how backwards this is. The reader has no idea why this matters. Woods may be an employee; he also may be a Hindu, he may be married, he may be incredibly mean to his dog, he may an award-winning poet, he may be an alcoholic . . . None of that matters. So why does it matter whether he is an employee of FS? The reader hasnt the faintest idea. Start with the rule If it is a WFH, the employer/commissioning party is the Author. It is a WFH if . . . Employee means . . . Then, apply all of that, as best you can, to what you know about Woods.

many facts, but because Woods was indeed "hired" and wrote only those scenes which the director wanted him to rewrite, it seems that FS had a lot of control over Woods. As a result, Woods is an employee. Since Woods is an employee, we must determine if he was acting within the scope of his employment. Since he was hired to write these scenes, he was acting within the scope. Because Woods was an employee of FS acting within the scope of his employment when he wrote these scenes, FS owns the copyright. *********** Something like this appeared on about half of the exams. The above is not a bad answer by any means the author clearly understands some important copyright law concepts. At the same time, however, saying, on these facts, that Woods is an employee, or FS owns the copyright, is fundamentally, and rather profoundly, incorrect. I would bet that this is actually pretty obvious to most of you. In fact, I would even bet that this would be quite obvious to the student who handed in the above answer. So how could he/she (and so many others) have made such an obvious mistake? Im not sure I have a good answer to that one. It has something to do with the difficulties that virtually all students have in managing their uncertainty about the law and one of the most important characteristics of a good lawyer is the ability to manage that uncertainty, to know what you know and to know what you dont know. What should you do faced with the above question? Its pretty simple, if you think about it. On these facts, Woods might be an employee, or he might not. So you need to indicate, first of all, what facts might make a difference in determining whether he was or was not an employee. Whether he was born in January or July wont matter; nor will the color of his hair, his marital status, whether he was a Republican or a Democrat, whether Searchlight Pictures is incorporated in Delaware or California, nor a million other facts that we might uncover about him and his relationship to Searchlight. What does matter is whether they withheld his taxes, provided him with employee benefits, had the right to make him work on other projects, gave him an office, etc. Those facts matter, of course, because CCNV v. Reid tells us that they matter, and its very helpful to the reader to indicate that. Next, you need to explain the legal consequences if he is, or isnt, an employee. [When I was in law school we called this forking, which is a useful way of describing it]. If he is an employee (and working within the scope of his employment), then Searchlight owns the copyright, and Woods has no cause of action against anybody for copyright infringement. If he isnt an employee, then he appears to be the author and therefore the owner of the copyright in his contributions. Something that looks like this:

Comment [DGP3]: On these spare facts, to say Woods is an employee is grounds for malpractice. It is critically important that you understand that if you dont, please come talk to me and we can see where the misunderstanding might be coming from. If you do understand it, the best way to demonstrate that is to not have sentences like this in your answer. Comment [DGP4]: A small point, but a pet peeve of mine please do not use the word since when you mean because. Since is a word that refers to the passage of time since 1998, there have been X numbers of homicides in Philadelphia. The student here meant to say Because Woods is an employee. Comment [DGP5]: Why? Why must we determine that and not, say, whether Woods was drunk when he wrote the scenes? Or whether he acted with the intent to infringe copyright? What does whether he was acting within the scope of his employment have to do with anything? If you havent stated the rule, the reader has no idea why we must determine this. It so happens that what the student has written is, more or less, correct; if Woods was an employee, you do have to determine next whether he was acting within the scope of his employment in order to apply the WFH doctrine. So this sentence indicates to someone who already knows copyright law (e.g., that guy who was standing up in front of the class all semester) -- that yes indeed, this student did learn something during the semester. But and this is of prime importance an exam is not an exercise in showing the professor what you learned during the semester. It is an exercise in demonstrating that you can answer questions the way lawyers answer questions. Youre not writing your answer for the guy who was standing up in front of class (Professor Post); youre writing your answer for someone who doesnt know copyright law and who therefore doesnt know the answer to the question posed (or even how to think intelligently about it); try to explain the way copyright law works and how it applies here to that reader. Comment [DGP6]: See Comment 3, above.

Under the work for hire doctrine, the employer is deemed the author and owner of the copyright of all works prepared by employees working within the scope of their employment. [Rule]. In CCNV v. Reid, the Supreme Court [. . . describe rules regarding application of common-law agency principles to determination]. In this case, we are just told that Searchlight Pictures hired Woods for the purpose of completing the TMBM screenplay. No other facts are present that would enable us to apply the CCNV factors to determine if he was an employee of Searchlights. If he was, [. . . describe the legal consequences]. If he was not, [describe the legal consequences]. This can be very difficult to do, because you may have to fork in this way several times during the course of your answer. Fork 1 (Woods is an employee) may require you to answer one set of questions in order to reach your conclusion, while Fork 2 may require you to answer an entirely different set of questions to reach your conclusion. Thats just the way legal analysis works. It is difficult, and you can only get good at it by practicing; but the one thing you cannot do is to pretend that the problem doesnt exist (by saying things like Woods was an employee just because it makes your life easier if you do so). 2. The Improper Assumption It is critically important that you distinguish assertions of fact statements or propositions that can be verified (or falsified) without reference to the law or to any legal reasoning whatsoever from rules of law and legal conclusions. Here are some assertions of fact: - Salt is a compound composed of sodium and chlorine; - On January 14, 2010, Alan Johnson slipped and fell in front of the main Law School building and broke two bones in his left hand; - On November 21, 2009, Carol Copland sang the song God Bless America, composed by Irving Berlin, at Lincoln Financial Field prior to the start of a football game between the Eagles and the Washington Redskins; - At the end of each month, Temple University deposits funds into a bank account identified as belonging to Professor David Post. Here are some legal conclusions: - Professor Post is an employee of Temple University;

- God Bless America is a copyrighted musical work whose copyright belongs to the Irving Berlin Trust; - Carol was infringing the Trusts copyright by publicly performing the musical work; - The Law School was negligent in not clearing the ice and snow from the Law School steps prior to Alans accident. One reason that it is important to keep these distinctions intact is that one may make assumptions about facts (so long as those assumptions are identified clearly), but one should never make assumptions about legal conclusions. This, too, is pretty obvious once you start to think about it. Consider again the question posed above regarding Woods ability to halt distribution of the film There Might be Mud. One answer to the question might be: Assuming that Woods contributions to the film are protected by copyright, and assuming that he is the owner of that copyright, and assuming that the theaters are publicly performing the motion picture, he can obtain an injunction against them on the grounds that they are infringing his copyright. Technically speaking, thats correct it is equivalent to saying If he has a cause of action for infringement, then he has a cause of action for infringement. Its entirely useless, of course, because it has assumed away everything of interest, everything that makes the problem a difficult one, and everything that you should be analyzing. These assumptions are not good assumptions because they are assumptions about legal conclusions, not facts. Although this is a hypothetical and extreme example, youd be surprised how many answers I get on exams that look more-or-less like it. Its fairly easy, and very important, to avoid: Dont assume conclusions. 3. Conclusion Application Rule Legal analysis proceeds, as you have all learned by now, by taking certain Facts, defining the Issues arising from those Facts, stating the Rules applicable to the Issues, and then Applying those Rules to the Facts to reach Legal Conclusions. IRAC: Issue Rule Application Conclusion. Over and over and over again. This is not a way of thinking that comes naturally to most people, but youre not thinking like a lawyer until you master it. The most common mistake that students make on exams, on their memos, in their papers, in their briefs, and in all of their legal writing is that they fail to follow this structure.

In fact, they often go about it in reverse: beginning with the conclusion, next stating the application to the facts of the case, and then getting around to the relevant rules of law. Heres an example; read question 5 on the exam and then the following. Ill indicate, after each sentence [IN ALL CAPS], the role that the sentence plays in the argument. ***** ANSWER TO QUESTION 5 Rachel might be misappropriating trade secrets. The 'AP Confidential' mark suggests that the information contained within the document was intended to be a secret. We don't know what measures were taken to keep it secret, but it is entirely possible that they were substantial. We also have little information regarding the value of the information contained within the document, but if substantial resources went into figuring out the strategy and the strategy would be of value to competitors, it is probably valuable. As such, it is probably subject to some degree of protection as a trade secret, since in order for Rachel to be liable for misappropriating the trade secret the information must be a trade secret, which means that it must be valuable commercially and truly secret. Conclusion Application Rule. Backwards. ***** Heres another example, from Question 1: ANSWER TO QUESTION 1 Jennifer Jones, by playing the soundtrack CD on her in-store sound system, constitutes a public performance because she played in her store, which is presumably open to the public where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. By playing it, she "performed" and "transmitted" it. 106(4), however, gives the exclusive right to perform the copyrighted work, regardless of whether it is fixed in a tangible medium of expression , which by having on CD, constitutes as being in a fixed tangible medium as a phonorecord, since a CD is a material object in which sounds are fixed and can be communicated via a CD player and her speakers. ***** Heres another example, from Question 6: ANSWER TO QUESTION 6 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent
Comment [DGP7]: Conclusion. Comment [DGP8]: Application you can see already that things are out of order, because theres nothing to indicate why it is relevant that the information was intended to be secret. Without the relevant rule, i cant possibly tell why that matters. Comment [DGP9]: Application again, why is it relevant whether substantial measures were taken to keep it secret? Theres a rule missing . . . Comment [DGP10]: Application. Comment [DGP11]: Application. Comment [DGP12]: Rule!! At the end!!

Comment [DGP13]: Application. Comment [DGP14]: Rule. Comment [DGP15]: Application of a different Rule. Comment [DGP16]: Rule [although not properly stated] Comment [DGP17]: Application (of yet another rule?) Comment [DGP18]: Application? Of what rule? Im getting pretty confused . . . .

(subject to the conditions of the Patent Act). Patent Act Section 101. Renzo's invention is entitled to a patent unless (1) his invention with all of the elements he would include in his claim was in the prior art before he invented it, enabling a person of ordinary skill in the art to create the invention (Section 102(a)); OR (2) his invention with all of the elements he would include in his claim was in public use or sale more than a year prior to his application (Section 102(b); OR (3) his invention would have been obvious to a person of ordinary skill in the art when he invented it. (Section 103). The facts raise no issue with regard to Sections 102(a). Section 102(a) bars an inventor from obtaining a patent if the invention was known or used by others in this country before the invention by the applicant, and theres nothing in the facts to suggest that was true here. The issue, is whether Renzo has met the requirements under Section 102(b). Section 102(b) asks whether the invention was "patented in a foreign country" or "in public use" in this country more than one year prior to the date of application. Although his invention is in public use in a foreign country, it does not appear that Renzo's invention has been patented in the foreign country. Was the invention was in public use for more than a year in this country? The one-time use of the mouse poison does not appear to be a "public" one, because Renzo only used by himself and had complete control over its use. Even if it was a public use, Renzo can argue it was an experimental use because it was the first time he even tried to see if it worked. A patentee may negate a showing of public use by coming forward with evidence that its use of the invention was experimental. Lough v. Brunswick.

Comment [DGP19]: Nice statement of the relevant rules.

Comment [DGP20]: Also good. Comment [DGP21]: Issue good. Comment [DGP22]: Rule good. Comment [DGP23]: Application of first part of the rule good. Comment [DGP24]: Application of second part of the rule good. Comment [DGP25]: Notice this doesnt quite work. Why does it matter whether he used it by himself and had control? Theres some rule missing here to explain the conclusion that the one time use of the poison is not a public use. Comment [DGP26]: This appears to be applying some rule that hasnt yet been stated e.g., A use even in public is not a public use if it is experimental. Comment [DGP27]: Oh, there it is! Why put it after the application rather than before?!

Introduction to Intellectual Property Final Examination, Fall 2009 Prof. Post NOTE: 1. Do not discuss any fair use defense to copyright claims unless specifically asked to do so. 2. All events take place in the present unless otherwise specified. 3. You are to answer all questions as though you are a new associate at a law firm, and you have been asked the questions below by one of the partners at the firm for whom you have been working; the partner, you may assume, knows nothing or nextto-nothing about IP law. ********************** In January 2006, the film There Might Be Mud (TMBM) was released in movie theaters across the U.S. to great critical and audience acclaim. It was produced by Searchlight Pictures, Inc. and directed by the great Hungarian director Laszlo Kovacs. It is set in late 19th century Oklahoma, and tells the story of two rodeo cowboys who are in love with the same woman (and who turn out, unbeknownst to them and to the woman involved, to be halfbrothers). The screenplay (including all dialogue) was originally written by Amy Anderson, based on the 1906 novel The Big Muddy by the great American novelist Cronwell J. Sinclair. (You may assume that any copyright protection for The Big Muddy has expired long ago). Kovacs, however, was unhappy with several of the scenes in Andersons screenplay, and demanded that Searchlight Pictures hire another screenwriter, Eddie Woods, to re-write the offending scenes. Woods was immediately hired, and contributed four new scenes that were included in the movie; in addition, Woods made substantial additional edits in several other parts of Andersons screenplay. Searchlight Pictures required everyone who worked on the film in any capacity to sign a Release that included the following language: I, [insert name], hereby acknowledge and agree that all of my contributions to the motion picture There Might Be Mud will be considered a work made for hire to the extent permissible by law. If for any reason my contribution is deemed to constitute something other than a work made for hire, I hereby

irrevocably and permanently transfer all right title and interest in and to any copyrightable content that I may contribute to the motion picture to Searchlight Pictures, Inc. Eddie Woods, however, did not sign the Release, perhaps because of the rushed circumstances leading to his hiring. The music for the film was composed entirely by Rhonda Bluepart (the lead guitarist of the popular band Radio on the Internet). Jennifer Jones owns a small clothing store on South Street in Philadelphia. In late 2007, she purchased a CD containing the music from the TMBM soundtrack. She listened to the album hundreds of times, both at home and in her store (where she projected the sound over an in-store speaker system that she uses to play music she thinks her customers will enjoy listening to while they shop). She liked the music so much that she began to compose songs to several of the melodies on the soundtrack, setting words from some poems that she wrote years ago to portions of Blueparts music (Blueparts music in the film contained no accompanying words). Jones ended up with 6 songs, each telling part of a story of an orphaned girl in early 20th Century Hungary (a story that had nothing whatsoever to do with the story of TMBM in fact, Jones claims she has never seen the movie to this day). Joness friend Alex is taking a course (Music Composition Techniques 101) at the Boyer School of Music at Temple University. With the permission (and encouragement) of the instructor, Alex invites Jones to attend their class in late September, 2009, where she performs 3 of the songs that she composed (after which there was a lengthy and animated discussion of songwriting techniques). As is customary in that course, her in-class performance (and the subsequent discussion) were recorded onto a DVD and placed in the school library for students to access if they were unable to attend class. In November, 2009 Jennifer is visiting New York and she sees an advertisement for a new off-off-Broadway show entitled More About Mud. She attends a performance, and, incredibly enough, she hears three songs that sound almost identical to three of the songs she composed. Question 1. Is Jennifer Jones liable for infringement of copyright by reason of playing the soundtrack CD on her in-store sound system? Who would be able to bring such an infringement suit against her? Question 2. Woods, it turns out, is very unhappy with the way the movie turned out he calls it, in an interview posted at the Movies.com website, a total piece of nauseating garbage.

Woods would like to know whether he can stop the continuing distribution of the film in movie theaters around the country. What do you tell him? Question 3. As it happens, Jennifer Jones is also a client of your firms, and she has come to the firm and asked whether she has a copyright infringement claim against the producers of More About Mud. Does she? Question 4. If the owner of copyright in the musical composition(s) that appear on the soundtrack CD were to assert an infringement claim against Jones and against Temple University arising out of Joness September, 2009 appearance at Alexs music class, would Jones be able to assert the defense set forth in Section 110(1) of the Copyright Act?1 Would Temple University? *********************** Rachel, a paralegal at your law firm, has been doing research on the newspaper industry for one of the partners at the firm (who has several newspapers as clients in her practice). Searching on the Internet one afternoon, Rachel comes across a document posted at a website, NewsBiz.com, that tracks developments in the newspaper business. The document is 14 pages long and entitled New Strategy for Pursuing Copyright Infringement on the Internet; the author is listed as Glenn Husfater, General Counsel at the Associated Press (AP) news agency. The document is labeled AP Confidential in a box on the upper-right-hand corner of each page.

Question 5. Rachel comes to you and asks you whether she can print out the document and include it as an appendix to her weekly memo to the partner for whom she works. What do you tell her?

Section 110(1) reads as follows: 110. Limitations on exclusive rights: Exemption of certain performances and displays Notwithstanding the provisions of section 106 , the following are not infringements of copyright: (1) performance or display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction, unless, in the case of a motion picture or other audiovisual work, the performance, or the display of individual images, is given by means of a copy that was not lawfully made under this title, and that the person responsible for the performance knew or had reason to believe was not lawfully made;

*********************** Renzo Viola is an Italian citizen, living (since 2001) in Philadelphia. He has advanced degrees in chemistry and architectural design, and is employed by the Philadelphia architectural and engineering firm of Messi and Associates, LLC. In early 2004, the firms offices became infested with mice. Renzo (whose house in Fishtown has also had a mouse problem from time to time) decides to try to come up with a new kind of mouse poison that could get rid of the little creatures. He buys several dozen laboratory mice to experiment on and, working in his basement at home and in his spare time, comes up with something that appears to do the trick. He finds that a specific mixture of (a) mouse serotonin (a brain hormone), (b) formaldehyde (a common chemical), and (c) tetrahydra cannibol (THC, the active ingredient in marijuana), mixed together in the approximate ratio 44:14:3, causes the muscles of mice who ingest small quantities of the mixture to seize up virtually instantaneously. He has trouble, however, getting the mice to eat the mixture; after much experimentation, he finally comes up with a way to combine this substance with aged cheddar cheese, by baking a mixture of cheese+poison for several hours at high heat; this forms a very fine powder that mice (a) can smell from long distances away, and which (b) they apparently find irresistible, and willingly ingest. Without telling anyone at his firm, he brings a few ounces of this powder into work one day in May 2004. He persuades the building superintendent to let him in to the boiler room in the buildings basement, where he believes the mouse infestation is centered, and sprinkles some of the powder around the baseboard and heating pipes. Over the next several days he discovers the bodies of thirty-five mice who apparently ate the substance and were immediately killed. Late that month Renzo (along with several other members of the firm) attended a dinner with representatives from one of the firms major clients, Shiboya-S/J, a large Japanese construction company. Renzo happens to mention the success that hes had with his mouse poison; his boss, also at the dinner, takes him aside and tells him, in no uncertain terms, not to talk about the firms mouse problems any more, and he also orders Renzo not to bring any more of the poison in to the office (fearing that some of the janitorial staff might inadvertently inhale or ingest the poison and become sick as a result). Three weeks later (June 2004) Renzo gets a call from the Endo Ito, the President and CEO of Fukana, a large chemical firm in Japan, who had heard, through some mutual friends, about the dinner conversation and about Renzos mouse poison. Ito expresses great interest in hearing more about what Renzo has come up with, and invites him to come to Fukanas offices in Tokyo to present his ideas. Renzo goes there in August, 2004 and makes a presentation in

which he describes in very general terms the substance he has come up with, while presenting detailed evidence from his many experiments showing how effective it works as a mouse poison. Renzo and Fukana come to an agreement in September, under which (a) Renzo will disclose to Fukana the precise details of his mixture and the process he uses to make it attractive to mice, (b) Fukana would have the right to market and distribute the mixture throughout Japan and the Far East for 10 years, and (c) Fukana would pay Renzo $1.50 for every kilogram of the substance it manufactured. Fukana begins commercial sales of the poison in December, 2004 in Tokyo, later expanding distribution to Shanghai, Beijing, Hong Kong, and various cities in Korea. Question 6. It is now December, 2009. Renzo has come to your law firm and asked for advice as to whether he has a patentable invention. What would you tell him? Question 7. It turns out that Renzo (and Fukana) had jointly applied for a Japanese patent in late 2006. That application is still pending in the Japanese Patent Office. In accordance with Japanese patent law, the entire application was published in the official Japanese Patent Gazette in January, 2009. Do these new facts change your answer to Question 6? In March, 2009, Renzo entered into an agreement with Diox, Inc., a leading U.S. distributor of pest control products, to make and sell his mouse poison in the United States. Diox begins doing so in November, 2009, using the brand name Mouse/BGone. Grelisch, LLC, a small chemical firm in Sheboygan, Wisconsin, has been selling several products for killing household insects under the brand names Roach Be Gone!! and Ants Be Gone!! since 1979. Question 8. Does Grelisch have a viable claim for trademark infringement against Diox? Will Diox be able to assert a fair use defense to that claim? *********************** END OF EXAM