It was a high-profile week for intellectual property news.
The biggest story this week was the Supreme Court releasing its
highly-anticipated decision in Alice v CLS. The Court affirmed
the Federal Circuit's judgment that the claims in the case are
not patent eligible. Read our write-up of the decision
Below is a selection of other intellectual property stories
attracting attention on the internet in the past week that were
not covered on www.managingip.com (see the bottom
of this blog post for the top stories published by Managing IP
enters public domain
A US court this week ruled that Sherlock Holmes
is in the public domain. This reaffirmed the
expiration of copyright once owned by author Arthur Conan
Judge Richard Posner of the United State Court of Appeals
for the Seventh Circuit
said the copyright on 46 stories and four novels have
expired as a result of a series of copyright
statutes. However, the copyright on 10 final stories published
between 1923 and 1927 will not expire until 95 years after the
date of original publication - between 2018 and 2022.
Doyle's estate had sued Leslie Klinger in 2011 as he was
about to publish an anthology of modern fiction about Holmes
called "A Study in Sherlock: Stories Inspired by the Sherlock
Holmes Canon". The estate demanded a $5,000 licensing fee for
using the Holmes character, which the publisher Random House
However, when Klinger was working on a sequel, the
Holmes estate again demanded a licensing fee. Klinger instead
sued saying he was not infringing on the 10 stories that
remained under copyright protection.
These stories included distinctions such as how Holmes felt
about dogs and details of Dr Watson's second
The estate argued that the last
10 stories made Holmes a more "round" character. Judge Posner
wasn't buying it.
characters thus don't evolve. Round characters do; Holmes and
Watson, the estate argues, were not fully rounded off until the
last story written by Doyle. What this has to do with copyright
law eludes us," Judge Posner wrote.
WSJ slams "lowly
A high-profile story this week was the USPTO's Trademark
Trial and Appeal Board cancelling trade marks that include the
term "Redskins" because the term is disparaging of Native
Americans. IP practitioners
told Managing IP the ruling may have more public relations
significance than legal significance.
The decision got a lot of coverage in the media. The
public debate over whether the term is acceptable has been
intensifying in recent years, with US President Barack Obama
saying last October that he would "think about changing it"
if he were owner of the Washington Redskins American football
There was some extreme criticism of the USPTO in the US,
especially from the right wing, which claimed politics were
behind the cancellation. Conservative
talk show host Rush Limbaugh said: "This is not the
Patent and Trademark Office. This is Barack Obama... All of
this, well, tyranny."
The Wall Street Journal
also ran an article in which it
said: "But now even the lowly patent clerks are
following liberal orders and deputising themselves as George
Custers to drive the Washington Redskins out of
Other newspapers and websites
criticised the TTAB's decision, although there appeared to be
some misunderstanding of what had happened. The Economist, for
example, harshly criticised the trade mark ruling but in a
story headlined "
The skinny on the patent
ruling" that began: "
MOST coverage of the decision by the United States Patent and
Trademark Office to cancel five patent registrations for the
Washington Redskins football team..." (It later updated the
article so it said trade mark instead of patent in the headline
IKEA sends "hackers" site
IKEA's trade mark lawyers have sent a cease-and-desist
letter to the creator a website called IKEAHackers. Jules Yap
created the website in 2006 to gather together "hacks" of IKEA
furniture that she saw on the internet.
Yap (the name is a pseudonym) tried to negotiate with
IKEA's lawyers but was told she would only be able to keep the
site if it was "non-commercial" and all advertising was
According to the Ars Technica website, she agreed to this
demand. Yap told the website: "Now by June 23, I would need to
take down the ads, not earn any income, and still advance their
brand on this site. Wonderful!"
Stubbing out a T-shirt parody
Philip Morris has sent a cease-and-desist letter to a
T-shirt seller. The New York state based T-shirt shop SkygraphX
received the latter over a T-shirt design that
features a Marlboro box labelled "Death" with "Population
filter" at the top.
Ars Technica quoted a response letter from the store's
lawyer Paul Alan Levy saying: "Your trademark claims are
nonsense. Shatz' use is plainly parody. He uses the design to
call attention to the serious consequences of smoking your
client's Marlboro products: it kills people, and thus 'filters'
I second that motion to dismiss
Singer Smokey Robinson is involved in a showdown with his
ex-wife next month over royalties to his songs.
Robinson - whose hits include "You've Really Got
a Hold on Me", "I Second That Emotion" and "Tears of a Clown" -
had sued his former wife Claudette seeking declaratory
relief that he would not have to share the reclaimed rights to
his songs with her. A coming change in the US will
allow artists to regain the rights to their older songs
given up early on in their careers.
The defendant countersued, claiming a 1989 stipulated
judgment three years after their divorce entitles her to 50% of
Smokey Robinson's lawyers this month
filed a motion to dismiss the counterclaims.
"Federal law provides that Plaintiff -
alone - recaptures all rights in the copyright
notwithstanding any agreements to the contrary," states the
motion. "On the other hand, Defendant asserts that under
California community property and contract law, she is entitled
to an undivided one-half interest in any recaptured copyrights
Plaintiff may acquire in the future even though the marriage
between Plaintiff and Defendant ended nearly 30 years
Robinson's lawyers argue that if there is an "irreconcilable
conflict" then federal law pre-empts state law.
Managing IP published the following stories this week,
available to subscribers and trialists:
CJEU clarifies when
an unregistered Community design is valid
New Japanese IP
High Court Chief Judge appointed
patents in Alice v CLS ineligible
USPTO hires Micron
patent counsel to run Denver office
ruling may have more PR than legal
Europe Women in
Business Law Awards: 2014 winners
Lipu, former SIPO commissioner
Trade Marks in
Ethiopia: EXTENSION TO RE-REGISTRATION
Supreme Court's POM
ruling will impact more than food and
How to use US law
to help with international trade secret
Rader to leave
From the blog:
Football World Cup