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Sherlock Holmes, Redskins, IKEA, Philip Morris, Smokey Robinson – the week in IP



Michael Loney


The Supreme Court's long-awaited decision in Alice v CLS, a Sherlock Holmes copyright ruling, Philip Morris' parody T-shirt dispute, the Wall Street Journal slamming "lowly patent clerks", the shut-down of the IKEAHackers website, and Smokey Robinson's copyright fight with his ex-wife were among the intellectual property stories hitting the headlines this week

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 here.

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 this week).


Sherlock Holmes 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 Doyle.

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 paid.

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 marriage.

The estate argued that the last 10 stories made Holmes a more "round" character. Judge Posner wasn't buying it.

"Flat 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 patent clerks"

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 team.

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 America."

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 and introduction.)


IKEA sends "hackers" site packing

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 removed. 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' the population."

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 his compositions.

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 ago."

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

SCOTUS holds patents in Alice v CLS ineligible

USPTO hires Micron patent counsel to run Denver office

TTAB "Redskins" ruling may have more PR than legal significance

Europe Women in Business Law Awards: 2014 winners

Interview: Tian Lipu, former SIPO commissioner

Trade Marks in Ethiopia: EXTENSION TO RE-REGISTRATION DEADLINE

Supreme Court's POM ruling will impact more than food and drink

How to use US law to help with international trade secret cases

Rader to leave Federal Circuit

From the blog:

Football World Cup quiz

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