Category : copyright

Patent Month in Review: March 2017

No Laches in Patent Infringement Cases

The Supreme Court addressed the distinction between laches and statutes of limitations in patent cases. Its 7-1 SCA Hygeine Products AKT vs. First Quality Products, LLC (S. Ct. 2017) considered whether laches could be used as a defense by defendant First Quality when 7 years had passed from when it first received notice of potential infringement in 2003 and the date that SCA filed an infringement complaint in 2010.  Considering the Congress-passed statute for damages recovery in 35 USC 286 and the laches defense, the Court followed its 2014 Petrella decision in a similar case under copyright law, “Laches is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.”

Eligibility: Get Technical or Get Denied

Dennis Crouch summarized a nonprecendential opinion well with the above maxim to apply to subject matter eligibility questions. The Federal Circuit’s conclusion provides some guidance for future applicants and practitioners, “In contrast to Diehr, claim 1 recites a method that changes the way electronic information is displayed via an unknown and unclaimed process. Absent any limitation to how the data are changed, there is little, if any, transformative effect.[1] Data are still data.” According to the court, the patent failed to show an inventive “technical manner” in which “data is gathered, analyzed, or output.”

[1] The machine or transformation test lives. See Older Supreme Court Cases Provide Guidance for Determining Patentable Subject Matter Post Alice

Assignment of Patent Alone May Not Extend to Child Applications

The Federal Circuit held that a party that had been assigned a parent patent lacked standing to sue for child patents issued from the parent patent. The assignment in question did not assign rights related to continuations, technical know how, or general IP rights.

The Happy Birthday Song, Batmobile, and Copyright Law

By Stephen B. Schott

Copyright law doesn’t change a lot but a pair of interesting cases came out recently involving some pop culture.

The Happy Birthday Song

dreamstime_s_17627706Are you one of those people who hears a story that sounds too interesting or curious to be true and just assumes it’s an urban legend? Do you hear a tall tale and immediately run it through Snopes? Me too. And the old “Happy Birthday” copyright tale definitely has the feel of an urban legend. It usually goes something like this:

“Did you know that every time someone plays Happy Birthday, they have to pay the guy who wrote it a dollar? And if they use it in a movie, they have to pay him a million dollars? It’s true. You can look it up.”

Ran that one through Snopes and you’ll get an article titled “HAPPY BIRTHDAY, WE’LL SUE” and an indication that the song is copyright protected. But a recent case changed that.

Good Morning to You Productions, owned by Jennifer Nelson, was working on a documentary about the song’s history when Warner/Chappell Music attempted to charge her $1,500 for the song’s use. Nelson argued the song is not protected by copyright and filed a class action lawsuit.

Federal Judge George King traced the copyright in the song. It started in 1893 when a school teacher named Patty Hill wrote a song with her sister. The song was called “Good Morning to You” and you can imagine the tune that goes along with it. The sisters gave their copyright to the Summy Company that published it in a song book.

At some point in the early 1900s, people started using the Hill sisters’ melody under the now-common “Happy Birthday” lyrics. No one knows who wrote these lyrics but in 1935, Summy Co. received a copyright for a version of the happy birthday song with the happy birthday lyrics.

Warner/Chappell acquired the rights to the copyright in 1998. Since then, the Happy Birthday copyright has generated $2 million annually in licensing fees. (Warner/Chappell donates a portion of these fees to a charity chosen by the Hill family.)

Considering Nelson’s case, Judge King ruled that “The Hill sisters gave Summy Co. the rights to the melody, and the rights to the piano arrangements based on the melody, but never any rights to the lyrics” and concluded that the copyright in the Happy Birthday lyrics was thus invalid.

Warner/Chappell can appeal the case so you can’t start using the song royalty-free in your blockbuster movie yet.

The Batmobile Lost Its Wheel

I would be happy with this for my car:


But if you want to really trick out your wheels, you should go to Mark Towle’s Gotham Garage. The Gotham Garage recently got a court-induced makeover, however, and can’t offer any more Batmobile retrofits.


(c) DC Comics 1941

The Batmobile’s history dates back to 1941, when it first appeared in a Batman comic book as a red car sporting a bat-shaped hood ornament. Since its introduction, it’s been Batman’s primary ride when he’s on the ground, making appearances in comic books, TV shows, and movies.

DC Comics, which owns the IP around Batman, sued Gotham Towle for copyright infringement in 2011, and the Ninth Circuit Court of Appeals recently held that the Batmobile is indeed a “character” protectable under copyright law.

The court held that the Batmobile “has varied in appearance over the years,” but it has certain identifying features such as (1) serving as Batman’s primary vehicle, (2) having features that give it a a bat-like appearance, (3) it is a vehicle that stands ready “to leap into action to assist Batman in his fight against Gotham’s most dangerous villains” (I can’t make these quotes up), and (4) hi-tech weapons and gadgets. The court concluded that these features render the Batmobile a “sufficiently distinctive” element of the overall Batman universe that is protectable under copyright law, and Towle’s Batmobile replicas infringed DC Comic’s copyrights in it.

In closing, the court quoted the caped crusader himself : “As Batman so sagely told Robin, ‘In our well-ordered society, protection of private property is essential.’”

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