Sample Essay Answer Outline (with commentary)

Here goes my outline (I tried to follow the guidelines as to how to answer given in class- please tell me if I misunderstood it).

I think it is fair that you put the correction on the website. Could you give me your personal appreciation anyway? (if there is something wrong or missing-not enough case law or if I forgot issues, if the issues should be more detailed, should I go further saying what sanctions they are likely to face…). Thank you very much.

Essay Question:

1.      The issues are:

a.       Copyright Infringement [YES,  1 POINT]

b.      Trade Secret [YES, 1 POINT]

c.       Patent Infringement: Google has multiple patents on elements of Gmail and we assume that one of the patents covers the Google chat codes.  [YES, 1 POINT]

[HOWEVER, YOU MISSED:

d.       PATENTABILITY (the ability to get a patent, which in this case was precluded because Snowe didn't invent it  35 U.S.C. 102); AND

e.       COMPUTER CRIME, NAMELY WIRE FRAUD (WHICH WAS A MAJOR POINT IN THE QUESTION).]

2.      Potential liabilities of Mr. Smowe and the Company:

a.       Mr. Smowe:

                                                              i.      Copyright Infringement: Mr. Smowe is liable for copyright infringement because he created a derivative work using a copyrighted work (Google chat code).  [CORRECT, IT WAS A DERIVATIVE WORK.  HOWEVER, THE FACT THAT IT WAS A DERIVATIVE WORK IS NOT PARTICULARLY RELEVANT TO THE QUESTION OF INFRINGEMENT.  AMAZON (OR SMOWE) DIDN'T HAVE TO INCORPORATE THE GOOGLE CODE INTO ANOTHER WORK FOR COPYRIGHT INFRINGEMENT TO LIE.]

                                                            ii.      Trade Secret: he is liable for inducing Crunch into stealing Google’s trade secret regarding Google chat.  [CORRECT, ALTHOUGH THE PROPER TERM IS MISAPPROPRIATION OF TRADE SECRETS, BUT I WOULD HAVE GIVEN YOU FULL CREDIT.  YOU CAN MAKE A (REASONABLE) PRESUMPTION THAT THE CODE TAKEN FROM GOOGLE CONTAINED TRADE SECRETS, ALTHOUGH THE QUESTION DIDN'T EXPLICITLY STATE SO.  UNFORTUNATELY, YOU MISTOOK THE COMPUTER CRIME ASPECT FOR THE "INDUCEMENT" ELEMENT OF THE TRADE SECRET MISAPPROPRIATION.  NO INDUCEMENT IS NECESSARY, NOR IS A CONSPIRACY REQUIRED.  IF YOU HAD LISTED THE ELEMENTS OF A TRADE SECRET MISAPPROPRIATION, YOU MIGHT HAVE SEEN YOUR ERROR.  UNFORTUNATELY, THIS ASPECT OF THE QUESTION WAS MEANT TO PROMPT A COMPUTER CRIME ANALYSIS (WIRE FRAUD) RATHER THAN TRADE SECRET MISAPPROPRIATION.  STILL, EVEN THOUGH I WASN'T EXPECTING THAT LINE OF INQUIRY, I WOULD HAVE GIVEN YOU DUE CREDIT.]

                                                          iii.      Patent Infringement: Mr. Smowe has made a combined work [COMBINED WORK IS A COPYRIGHT NOTION, NOT A PATENT NOTION] using patented Google chat code and Amazon website code  [THE AMAZON CODE IS IRRELEVANT TO THE PATENT ISSUE, THE CODE STOLEN FROM GOOGLE COVERS THE GOOGLE PATENTS]. He is liable for patent infringement for making a new work [AGAIN, THERE IS THAT MIXING OF COPYRIGHT PHRASEOLOGY IN A PATENT ISSUE, WATCH FOR THAT, IT INDICATES LACK OF UNDERSTANDING OF THE DISTINCTIONS BETWEEN THE INTELLECTUAL PROPERTY RIGHTS]  based on a patented one and will very likely be sued by Google if he tries to commercialize “viola”. He cannot escape his liability by saying that he was working for Amazon when he infringed Google’s patent.  [IT IS HIGHLY UNLIKELY THAT GOOGLE WOULD SUE SMOWE BECAUSE SMOWE DOESN'T HAVE ANY MONEY, AMAZON DOES.  (REMEMBER, SUE THE MONEY.) TECHNICALLY, HOWEVER, WHAT YOU SAID IS CORRECT, SO I WOULD HAVE GIVEN YOU CREDIT FOR IT.]

b.      The Company is liable because of the principle of vicarious liability [FOR WHICH IP RIGHT?  PATENT?  COPYRIGHT?  MOREOVER, IF AMAZON HAD IMPLEMENTED THE CODE, THEY WOULD HAVE BEEN USING IT, AND THEIR LIABILITY FOR PATENT INFRINGEMENT WOULD HAVE BEEN DIRECT] and as Mr. Smowe created this new product as part of his day-to-day work (what he is paid for). If he had created it outside of his job function, the company could not be held liable.  [WRONG, IF THEY USED THE CODE, THEY WOULD HAVE BEEN LIABLE ANYWAY.  OWNERSHIP ISN'T PART OF THE ELEMENTS FOR COPYRIGHT OR PATENT INFRINGEMENT.  IT MIGHT BE EVIDENCE THAT AMAZON HAD ACCESS TO THE GOOGLE CODE PERHAPS, BUT IS NOT A REQUIREMENT FOR INFRINGEMENT.]

                                                              i.      Copyright Infringement: Mr. Smowe’s company owns the © for the Amazon website code and for the selection and arrangement of Amazon website code + Google Chat Code (because Mr. Smowe works under a work for hire arrangement, Amazon is the owner of the ©) but not for the Google chat code.  [THAT'S ALL WELL AND GOOD, BUT IT IS NOT RELEVANT TO THE INFRINGEMENT ISSUE.]  The Company is liable for © Infringement because:

1.      It is the owner of the new © on the derivative work in virtue of the work for hire contract with Mr. Smowe.  [NOT QUITE RIGHT.  WHAT YOU SHOULD HAVE SAID IS THAT AMAZON DID NOT HAVE PERMISSION TO USE GOOGLE'S CODE, OR INCORPORATE IT INTO ANOTHER WORK (THE AMAZON CODE).] 

2.      Vicarious liability: the company is liable for the act of its employees committed in the course of their work.  [OKAY, BUT THAT WASN'T QUITE WHAT I WAS LOOKING FOR.  REMEMBER THE ELEMENTS OF COPYRIGHT INFRINGEMENT AND SEE IF THEY CONVEY LIABILITY (REGARDLESS OF ANY OWNERSHIP ISSUES).  REMEMBER, OWNERSHIP OF THE DERIVATIVE WORK IS NOT REQUIRED FOR COPYRIGHT INFRINGEMENT.]

                                                            ii.      Trade Secret: The Company is not liable for Mr. Smowe inducing Crunch to violate Trade Secrets because vicarious liability does not go that far. Mr. Smowe was not supposed to break the law to realize his work.  [RIGHT IDEA, BUT WRONG LAW.  THIS WAS THE COMPUTER CRIME ISSUE.]

                                                          iii.      Patent Infringement: The Company and Mr. Smowe have a contract of complete assignment by which Mr. Smowe assigns the new patented works he creates while working for Amazon, to the Company.  [AGAIN, OWNERSHIP OF ANYTHING IS NOT AN ELEMENT TO PATENT INFRINGEMENT (OR ANY OTHER IP INFRINGEMENT).] He is the inventor and his name will be on the patent but once issued it will be Amazon’s property.  [THE PATENT APPLICATION SHOULD NEVER ISSUE BECAUSE SMOWE DIDN'T INVENT IT.  MORE IMPORTANTLY, AMAZON SHOULD NOT EVEN DRAFT (LED ALONE FILE) THE PATENT APPLICATION BECAUSE SMOWE WAS NOT AN INVENTOR.  THE PATENT ATTORNEY SHOULD VET SMOWE ABOUT INVENTORSHIP BEFORE DRAFTING THE APPLICATION.  WORSE, PATENT APPLICATIONS GET PUBLISHED 18 MONTHS AFTER FILING, AND THAT PATENT APPLICATION COULD BE USED AS EVIDENCE AGAINST AMAZON DURING TRIAL FOR COPYRIGHT AND/OR PATENT INFRINGEMENT.  IT CERTAINLY WOULD HAVE RAISED SOME QUESTIONS DURING DISCOVERY (AND PERHAPS RAISED A FEW ELECTRONIC DISCOVERY QUESTIONS).] Even if Amazon filed a patent on the new combination (Amazon + Google chat), and even if it were issued, the new work could never be made or commercialized because it would infringe Google’s patent.  [NOT TECHNICALLY TRUE, IT COULD BE MADE AND USED -- BUT NOT LEGALLY --.  MOREOVER, IF AMAZON GOT PERMISSION FROM GOOGLE (HOWEVER UNLIKELY) THERE WOULD BE NO INFRINGEMENT.  THAT IS, INCIDENTALLY, ONE WAY OUT OF AMAZON'S DILEMMA.]  Therefore the patent would be useless. It would be a waste of money, time and energy to file a patent for that invention.  [RIGHT RESULT, EVEN IF THE RATIONALE WAS A LITTLE OFF.]

Possible defenses of Amazon and Mr. Smowe:

·         There can be no © on a code. False : there is a © on source code and object code, and even on executable binaries (Apple Computer, Inc. v. Franklin Computer).  [CORRECT]

·         Software cannot be patented: False (Diamond v. Diehr) [CORRECT, ALTHOUGH I WOULD HAVE CITED STATE STREET)

·         Fair use: 4 factors:

o   Purpose and character of the use (commercial nature or non profit educational purposes)

o   Nature of the copyrighted work

o   Amount and substantiality of the portion used in relation to the copyrighted work as a whole

o   Effect on the potential market for or value of the copyrighted work

 [GOOD!  CITING THE ELEMENTS HELPS YOU FORMULATE THE RESPONSE.]

>Purpose of the use is commercial, nature of the copyrighted work is a program, amount and substantiality that is copied is a great deal (the whole of Google chat code), effect on the potential market for Google chat is unclear…maybe it would not be so affected because having an interactive Amazon website probably would not harm Google chat functions.  [THIS BRINGS UP A GOOD DISCUSSION.]

However, no fair use can be alleged because a whole program has been copied without permission in order to obtain commercial gain. Cf Micro Star v. Formgen (“compilation and sale of user-generated game levels that contained elements of the plaintiff’s copyrighted work not deemed as fair use”). Moreover the manner of obtaining the copyrighted work argues against any kind of fair use, as the manner of obtaining the codes has been by stealing them. We are not therefore in a reverse engineering type of case.  [GOOD.]

In conclusion, I think that none of these defenses are plausible and have a chance of winning in a court of law. Therefore I would advise Amazon to stop making publicity about the new product, not try to get a patent on it because the patent would be worthless anyway and I would advise Mr. Smowe to stop doing this kind of practice that endanger the company’s reputation…  [GOOD CONCLUSION.]

Question: can I use derivative work and compilation/collective work alternatively, at least in this case or is it wrong? I do not really understand the practical difference between them.  [THE DIFFERENCE WAS IRRELEVANT TO THE QUESTION AT HAND.  I THINK YOU WERE USING THE TWO KINDS OF WORK TO IDENTIFY AN OWNERSHIP ISSUE THAT WAS IRRELEVANT TO THE QUESTION.  THE WAY YOU IDENTIFIED THE WORKS, HOWEVER, WAS CORRECT, EVEN IF IRRELEVANT.  HOWEVER, EVEN THOUGH CORRECT, I WOULD NOT HAVE AWARDED POINTS BECAUSE IT WAS IRRELEVANT.]

[OVERALL, THIS WAS GOOD.  YOU ANSWERED THE QUESTIONS, AND EVEN HAD TIME TO IDENTIFY THE POTENTIAL DEFENSES.  LOTS OF POINTS.]