US Intellectual Property Law

US Intellectual Property Law (2022 Spring)

Instructions:

The essay contains two questions. You must answer both. Neither of your two answers may exceed 2500 words.

You do not need to do research beyond the scope of the content listed in the PPTs.

If you want to quote language from statutes or cases, please find the original text before quoting. Do not quote directly from the PPT. Please quote statutes or cases only as needed to make your point.

All of the events described in these questions are fictional. When answering the questions, you should assume that all statements in the narrative are accurate. If you set forth, you should ignore that knowledge when framing your answer. If you find ambiguity in any aspect of the narrative of the question, do not ask for clarification. Instead, form your own interpretation to resolve the ambiguity and make that interpretation clear in your answer.

Question # 1

Due to the global pandemic of the coronavirus in 2019 (COVID-19), masks have become a necessity in many people’s lives. The most common masks on the market are surgical masks. Although this kind of masks have the ability to reduce effectively the direct entry of pathogens and other aerosol contaminants into the wearer’s nose and mouth via airflow, many people complain their design to be too plain and tasteless.

To meet consumer demand for more stylish designs, many businesses began to print various patterns on the masks. When choosing which pattern to print, they often consider whether a pattern is popular among consumers, because printing popular patterns helps attract consumers to buy masks and thus increase profits. Many of them look to the works from the Walt Disney Company (“Disney”).

Disney is one of the most successful corporations in the world. Despite the shock of the COVID-19 pandemic, the company’s current market capitalization is $118.27 billion (ranked 45th of the most valuable company). Critical to Disney’s success has been the popularity of a series of animated movies. The following are some of Disney’s most famous animated movies. The central characters of these films have been deeply rooted in people’s mind.

Frozen (2013) Snow White (1937)

Lilo & Stitch (2002)

Mickey Mouse (1928) Winnie the Pooh & Pals (1966)

Amber Williams runs a grocery store in Los Angeles, California, five miles from Disney California Adventure Park in Los Angeles. Several hotels near this grocery store are often filled with Disney park visitors. Many of these visitors will make purchases at Amber’s store before entering the park, because the prices of the goods in her store are considerably lower than the prices in the stores inside the park.

On March 12, 2020, as more than a dozen visitors tested positive for COVID-19, Disney’s management decided to temporarily close the park. Since then, the sales of Amber’s store began to decline. To attract customers, Amber decided to launch Disney- movie-themed masks for sale. The masks she sold are usually printed with one of two types of patterns. One type was a pattern that put together the central characters of the Disney movies. The other type is a partial extract of a poster of a Disney movie. The Disney-movie-themed masks sold well after their launch, especially after July 21, 2020, the day when Disney management decided to reopen the park. Shortly after the reopening, Disney park stores also began selling Disney-movie-themed masks, on which the pattern was not the same as the masks sold by Amber, but very similar. In January 2021, after discovering that Amber ‘s store was selling Disney-movie-themed masks, Disney management planned to file a lawsuit against Amber.

The masks sold in Amber Williams’s Store

Amber is not the only one who believes that selling masks related to the theme of Disney animated movies can be profitable. ELY-designs LLC (“ELY”), a Seattle-based daily goods design and manufacturing company, also decided to incorporate some elements of the Disney movies on its masks and put them up for sale online. To avoid infringement lawsuits, ELY did not take the entire image of the central characters of the movies, but only used their mouth, nose, and part of their face. These masks sold well once they were launched online in May 2020. Orders have been placed from all over the United States. In February 2021, Disney management decided to file a lawsuit against ELY shortly after they found these items were sold online.

The masks that ELY-designs LLC sold online

Kelly Thomson is a Youtuber. She is very skilled at crafting objects, and her videos featuring handmade objects have attracted over 120,000 subscribers to her channel. She mainly monetize her videos by inserting ads. But occasionally, based on the feedback from her subscribers, she will have some of the objects that she makes produced by small manufacturers near her home and put them up for sale on eBay. On September 12, 2020, she posted videos showing several masks she made based on Disney movie themes or characters. The video has been viewed nearly 70,000 times and liked more than 1,200 times. After learning that the feedback from subscribers was positive, Kelly had a manufacturer make 5,000 of each of the two masks pictured below and put them up for sale on eBay. Each mask was priced at $10 and the cost to make them was $2 each. As of May 2021 when Kelly received a letter from Disney’s lawyers, she had sold 7,650 masks.

Youtuber Kelly Thomson

In a memorandum containing no more than 2500 words, answer the following questions, explaining the reasoning underlying each of your responses:
(1) What claims might Disney assert under the copyright law of the United States against each of the following parties:

a. Amber Williams; b. ELY-designs LLC; c. Kelly Thomson?

(2) What defenses might those parties assert in response?
(3) What is the probability that Disney would prevail against each party?
(4) If Disney prevailed, what remedies would be available to the company?
If you need additional information to answer any of these questions, say what that
information is and why it matters.

Question # 2

Knife is one of the earliest and most important inventions of human society. Since the Stone Age, and even earlier, people have used knives for self-defense, hunting, and slicing food. Over the course of history, people have improved the function of knives in a variety of ways. One important improvement was to make knives lighter, sharper, and harder to rust by changing the material they were made of. Another important improvement was to make them more efficient in cutting by changing their shape.

The evolution of the knife

The way of changing the shape of knives includes not only altering the shape of a blade, but also combining multiple blades together. The combination of multiple blades and other elements is often called a slicer or a cutter. Typically, the first egg slicer was invented by a German man named Willy Abel in the early twentieth century. The purpose of this device was, not surprisingly, cutting eggs.

Willy Abel’s egg slicer

The cutter on vegetables and fruits dates back to 1924 and even earlier. Below is a patented vegetable and fruit cutter by an inventor named Richard Cleary. His patent application was filed with the US Patent Office in December 20, 1924 and was granted on January 11, 1927.

Alex Johnson, who had studied at the School of Engineering and the School of Business at the University of Southern California, founded a start-up company that manufactures everyday products. It was February 17, 2015, while Alex was at home making a banana pie, he got the idea to make a device specifically for cutting bananas.

Alex immediately designed the banana slicer. He finished a prototype by March 2, 2015, and immediately had his company manufacture it. On July 1, 2015, his banana slicer was sold on Amazon.com. It turned out that the product was selling pretty well.

The following are some of the customer reviews：

On January 1, 2016, Alex filed a patent application with the Patent and Trademark Office for his banana slicer. Below is an excerpt from his patent application.
Although people often slice bananas in connection with preparation of fruit salads, dishes containing cereals and other culinary items, people usually have to use a knife for cutting the banana slices one by one. The present inventor is unaware of the existence of slicing utensils or tools specially adapted for bananas.
…
Thus, the preferred embodiment comprises a substantially flat frame, which circumscribes an area sufficiently large to contain a typical banana, even a large banana, laid to rest on its side. The foregoing is shown on the exploded perspective view of FIG. 1. Preferably, as it is revealed by the drawing figures which depict the preferred embodiment of the invention, the frame of the banana slicer conforms to the curvature of a typical or ordinary banana. Thus, the banana slicer is elongated and the frame is curvilinear so that the slicer fits on top of a typical banana, as is specifically shown on FIG. 1.
…
A plurality of spaced, substantially parallel disposed blades or ribs interconnect two elongated sides of the frame. The positioning of the blades or ribs is such that when the banana slicer is laid to rest on a substantially horizontal flat support surface (not shown), the blades or ribs are disposed substantially vertically. In accordance with the invention, the blades or ribs must be sufficiently thin so as to be able to serve as cutting tools capable of cutting through a banana, without having a specially sharpened wedge shaped cutting edge. On the other hand, because the blades are preferably made from plastic, they cannot be so thin or narrow that their structural integrity would be compromised, or so thin that they could not be manufactured by suitable manufacturing processes, such as plastic molding. For these reasons, the blades or ribs of the preferred

embodiment are approximately 1 mm wide, although it should be understood that their width can vary for as long as the foregoing requirements are met. For example, when the blades are made from high density polyethylene, their thickness can be as little 0.9 to 0.8 mm, without compromising their structural integrity.

I claim:

1. A utensil for slicing bananas comprising:
an elongated plastic frame conforming to the shape and area of a typical banana, the frame having curvilinear opposite longitudinal sides, and a plurality of substantially evenly spaced, substantially parallel disposed ribs integral with the frame and interconnecting the curvilinear opposite longitudinal sides of the frame, each of the ribs being sufficiently thin to form means for cutting transversely through a banana, the spaces between the ribs defining thickness of banana slices cut by the utensil.

2. The banana slicing utensil of claim 1 wherein each rib is approximately 1 mm thick.

3. The banana slicing utensil of claim 1 wherein the ribs are disposed at an approximate distance of 4 mm from one another.

Alex‘s patent application was published on July 1, 2017, and the patent US5035888 was issued a year later, on July 1, 2018.

Alex wasn’t the only one who came up with the idea of designing a slicing device. On January 1, 2014, Henry Fox, the founder of Fox Manufacturing Inc., came up with the design of the cutter shown in the figure below.

The figure in Henry’s patent application
In the above figure, 4 refers to the handle of the cutter; 3 refers to the edge of the cutter,

consisting of plastic; 2 refers to the multiple thin plastic ribs; 1 refers to the entire cutter. This cutter is shaped roughly like a banana, but is straight. Henry believed that this design not only allows consumers to use it to cut bananas, but also to cut cucumbers and carrots. Due to being occupied with other matters, Henry did not file a patent application with the Patent and Trademark Office until August 5, 2015. The application was published on February 5, 2017.

On January 1, 2018, Henry began selling his slicer, which looks like the figure in his patent application. The ribs are 1.25 mm thick, and the ribs are spaced 4.2 mm apart. On September 1, 2018, Alex filed a lawsuit against Henry for patent infringement.

Suppose you are counsel for Alex Johnson, in a memorandum containing no more than 2500 words, answer the following questions, explaining the reasoning underlying each of your responses:

(1) What are the potential challenges to the validity of Alex’s patent, and the responses that Alex has to the challenges?
(2) What are infringement claims that Alex might assert against Henry, and the defenses that Henry might use in responses?

End of Paper