Happy Birthday, Burberry, JC Penney, banking patents, Fox, Dish Network, US Senate, Authors Guild appeal – the week in IP
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Happy Birthday, Burberry, JC Penney, banking patents, Fox, Dish Network, US Senate, Authors Guild appeal – the week in IP

Dish Network

Details of Warner/Chappell’s Happy Birthday settlement, a Burberry trade mark suit, banks’ increased patent applications, a Fox and Dish Network settlement, two treaties being sent to the US Senate for ratification, and writers supporting Authors Guild’s appeal to the Supreme Court were in the IP news this week

Also on the blog this week:

US Chamber of Commerce releases international IP index

Now online: IP Stars 2016 trade mark rankings

In our news and analysis:  

2015 PTAB petitioner trends and 2016 predictions

Fox loses appeal over Glee TV series

2015 in Canadian IP cases: trade mark

Carpmaels and Fieldfisher expand ahead of UPC launch

2015 in Canadian IP cases: patent

PTAB could affect VirnetX’s $626m award in win over Apple

2015 in Canadian IP cases: copyright



Warner’s $14m Birthday present

Warner/Chappell will pay $14 million to end the lawsuit over the rights to the song Happy Birthday, according to The Hollywood Reporter.

In a court filing this week, the company not only said it would pay the sum to end the lawsuit but also proposed a final judgment and order that would declare the song in the public domain.

This follows US district court judge George King ruling last September that Warner did not hold any valid copyright to the Happy Birthday lyrics. He did not rule the song was in the public domain, however. 

The Hollywood Reporter said the plaintiffs in the class action case – led by documentary maker Jennifer and represented by Wolf Haldenstein Adler Freeman & Herz attorney Mark Rifkin – will seek $4.62 million of the settlement fund, with the rest going to those who have paid to licence the song and meet the definition of the proposed class.

A hearing on the proposed settlement is scheduled for next month.

Keeping JC Penney out of check?

Burberry check

Burberry has sued JC Penney, accusing the US retailor of infringing its signature “check” pattern (right) by selling copies of its designs, reports The Wall Street Journal

The British luxury clothes brand filed a lawsuit in the Southern District of New York that alleges a ‘scarf coat” and quilted jacket feature copies its plaid pattern, which has been protected since Thomas Burberry registered a trade mark for it in the 1920s. 

The lawsuit says Levy Group made the items, an example of which from the complaint is pictured below.

JC Penney

The complaint was filed by Steptoe & Johnson. It says: “Defendants’ infringement of the BURBERRY CHECK Trademark is likely to cause, and has caused, consumers to believe mistakenly that the defendants are either affiliated with, sponsored by or somehow connected to Burberry, or that the infringing products sold and promoted by defendants either are genuine Burberry products, or, were endorsed or authorised by Burberry.”

UPDATE: MarketWatch reports that JC Penney has issued a statement that it is "fully indemnified by the supplier, and therefore any damages awarded in the case will be fully covered by the supplier." It  added that the suit will have "no financial impact" on it. 

Banks depositing more patent applications

Bloomberg Businessweek had an interesting piece this week on how banks are educating patent examiners about what they do through seminars. The reason, said Bloomberg, was to counteract the granting of patents to other industries covering age-old banking practices.

The banking industry is increasingly seeking patents. The 1,192 patents awarded to banks over the past three years was up 36% on the previous three year period.

The banks hope the USPTO will not grant patents to applicants with similar ideas. Banks in recent years have been involved in lawsuits over their methods of encoding and transmitting data related to transactions.

“There was this frustration of ‘Why is that patent out there?’ ” Sean Reilly, general counsel of Askeladden, told Bloomberg.

Fox and Dish settle

Dish Network

Fox Broadcasting and Dish Network have settled a dispute over Dish’s AutoHop feature, which automatically skips over commercials for subscribers, reports Variety.

The terms of the settlement were not disclosed. But as a result Dish’s AutoHop commercial skipping feature will not be available for Fox stations until seven days after a programme airs.

The two parties settled all pending litigation between them, including disputes over Dish’s Slingbox technology and the AutoHop, PrimeTime Anytime and Transfers features. Fox claimed the features violate its copyright and carriage contracts.

Beijing and Marrakesh sent to Senate

Pres Obama

President Obama this week sent two treaties to the Senate for ratification: the Beijing Treaty on Audiovisual Performance and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.

In other Senate-related news, the Trade Facilitation and Trade Enforcement Act of 2015 was passed this week. The customs bill has a series of IP-related provisions, including codification of the Intellectual Property Rights Center as a formal institution within US Immigrations and Customs Enforcement.

Chris Dodd, chairman of the Motion Picture Association of America, commented: “This bill promotes a vibrant creative economy by providing creators with modernised tools to protect their content and increase their global competitiveness. Passing a customs and enforcement bill is an accomplishment that has not been achieved in nearly twenty years.”

Authors turn their hands to writing briefs

A group of prominent authors has filed a brief supporting the US Authors Guild’s petition for the Supreme Court to hear its dispute with Google over the digitalisation of millions of in-copyright works, reports The Guardian.


Last October, the Second Circuit rejected Authors Guild’s appeal. It ruled that Google Books’ scanning and indexing of books is a transformative use that renders a public benefit, leading to a finding of fair use.

The authors throwing their weight behind the Supreme Court appeal include JM Coetzee, Margaret Atwood, Malcolm Gladwell and Peter Carey.

Their brief states: “Although Google described its Books Library Project to the public as though it were a charitable endeavour … it was a vehicle to make searchable digital copies of over 20 million authors’ works (four million in copyright) available for searching … Paying for licences for those copies was not part of Google’s business model … By creating a search project that would draw people repeatedly to new searches, as one consults a dictionary, Google created a vehicle for creating new, advertising-bearing web pages that would enrich its advertising revenue.”

And lastly…

German inventor Artur Fischer died on January 27, aged 96, reports The New York Times.

He made his first patented invention in 1947, a method for triggering a flash when a camera’s shutter was released. He went on to register more than 1,100 patents, more than Thomas Edison, who had 1,093 patents.  

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