“Happy Birthday to You” Song Copyright Stricken

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

Good Morning to You Productions Corp. v. Warner Chappell Music, Case. No. 2:13-cv-04460, C.D. Cal. is about whether Warner/Chappell was properly asserting that it owned a copyright in the song “Happy Birthday to You.”

Birthday CakeThe case is a class action suit led by film production companies and a California musician who were working on a documentary about the song, “Happy Birthday to You.”  Warner/Chappell claimed to have a copyright on the song and demanded that Plaintiffs pay a $1,500 licensing fee to use the song.  The court goes through a large amount of historical evidence presented by both sides on cross motions for summary judgment.  After reviewing the evidence, the court found that Warner/Chappell did not own a valid copyright in the “Happy Birthday” lyrics and that the music for the song had entered the public domain years ago.  The origin of Warner/Chappell’s claim that it owned the copyright went back to a previous company which had acquired a song from two sisters that had the same music but different words, titled “Good Morning to All.”  The court could not find any reference to the “Happy Birthday” words in the agreement between the sisters and the purchasing company, Summy Co. (Defendants were successors-in-interest to Summy Co.).  Thus, the court ruled in favor of Plaintiffs.  Plaintiffs are seeking to have Warner/Chappell return the millions of dollars they collected over the years.  Also, we are all now free to sing “Happy Birthday to You” without fear of having to pay $1,500 (unless the case gets reversed on any appeal).

Another Attempt at a Federal Trade Secrets Law

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

US Capitol BuildingA bill was introduced on Wednesday, July 29, 2015, in the U.S. Senate and House of Representatives by a bipartisan group of senators and representatives that would allow a private right of action for misappropriation of trade secrets under federal law.  Currently, federal law only provides criminal relief for the theft of trade secrets and civil relief is left to the laws of each state.  This is not the first time that Congress has tried to pass such a law.  An attempt approximately one year ago failed.  The current bill is title “Defend Trade Secrets Act,” and it would be enacted under the Economic Espionage Act of 1996.  Business groups such as the U.S. Chamber of Commerce and dozens of corporations, including IBM, Boeing, General Electric and Nike, support the bill.  Trade secrets and the protection of trade secrets are becoming increasingly important as the laws governing patent protection are changing and narrowing.  Let’s see if the government gets it done this time.

2d Circuit Punts on Copyright Registration Question Again

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Think!An interesting copyright question continues to percolate in the Circuit Courts over what “registration” means as a prerequisite for filing a copyright claim in federal court. The Second Circuit, in The A Star Group, Inc. v. Manitoba Hydro, (No. 14-2738) noted the Circuit split on the issue but declined again to weigh in.

Under 17 U.S.C. § 411(a), a copyright holder must register its work before it can initiate a lawsuit against an infringer:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

The question is what is sufficient to satisfy the “registration” requirement–is the filing of the application sufficient, or does the application need to be accepted and granted by the Copyright Office?

Currently, the Circuit Courts on split on the issue. The Fifth and Ninth Circuits require only that the copyright holder file the application. See, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Cosmetic Ideas Inc. v. IAC/InteractiveCorp,  606 F. 3d 612, (9th Cir. 2010). While the Tenth and Eleventh Circuits require that the Copyright Office grant the application. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990) ;  La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-05 (10th Cir. 2005). The Seventh Circuit appears to have taken conflicting views on this matter. Compare Chicago Bd. of Educ. v. Substance Inc., 354 F.3d 624, 631 (7th Cir. 2003) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004).

The Second Circuit chose not to wade into this issue and was able to decide the case without having to choose a side. At some point, however, the U.S. Supreme Court will likely need to resolve this dispute as the Circuit split continues. As it stands now, a copyright holder can face very different results depending on where the case is filed, which is not a helpful situation when a national right, such as a copyright, is involved.

Peace, Love, and . . . Trademarks?

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

In Juice Generation, Inc. v. GS Enterprises, LLC (Case No. 2014-1853), the Federal Circuit reversed a decision by the Trademark Trial and Appeal Board (No. 91206450) that sustained an opposition brought by GS Enterprises against Juice Generation’s attempt to register the mark “PEACE LOVE AND JUICE.” The Federal Circuit remanded for further consideration, finding that the TTAB “did not adequately address the weakness of GS’s marks and did not properly consider the three-word combination of Juice Generation’s mark as a whole in comparing it to the two-word combination in GS’s marks.”


Juice Generation operates a chain of juice bars in New York City. It attempted to register the mark “PEACE LOVE AND JUICE” with the USPTO in connection with juice bar services (disclaiming “juice”).

GS Enterprises has four registered trademarks in the restaurant services class that incorporate the words Peace and Love–“P & L PEACE & LOVE,” “ALL YOU NEED IS PEACE & LOVE,” “PEACE & LOVE,” and “P & L PEACE & LOVE NEW YORK.” Examples of two of its marks are shown below:

Peace Love Image 2 Peace Love Image 3

GS Enterprises filed an opposition to Juice Generation’s application, arguing that the “PEACE LOVE AND JUICE” mark created a likelihood of confusion.

The TTAB considered the 13 DuPont factors in analyzing the likelihood of confusion. It first found that Juice Generation had been using its mark for years without evidence of actual confusion, but it discounted this factor because it did not think that there had been “meaningful opportunities” for actual confusion to occur given the parties’ use of their marks.

The Board next looked to the dominant feature of Juice Generation’s mark (PEACE LOVE) and found it was virtually identical to GS Enterprise’s “PEACE & LOVE” mark.

The Board also looked to at least 26 examples of 3rd parties using similar combinations of Peace and Love in their marks–e.g., “PEACE LOVE AND PIZZA,” “PEACE LOVE YOGURT,” and “PEACE, LOVE & BEER,” but did not find that there was sufficient evidence to show that consumers recognized that other entities were using similar terms in their marks.

On balancing this evidence, the TTAB concluded the there was a likelihood of confusion with consumers and sustained GS Enterprises’ opposition.

The Federal Circuit Vacates and REmands

The Federal Circuit was clearly troubled by the conclusions the TTAB reached. It first noted that likelihood of confusion is a legal conclusion that it reviews de novo, and that it is to be analyzed using the 13 DuPont factors.

The Federal Circuit was concerned by the TTAB’s failure to place much weight in the numerous examples of other marks that used the words “PEACE” and “LOVE” together with other terms. The Court found these examples to be “powerful” evidence that GS Enterprises’ marks were not strong on their face. With so many similar marks, there was substantial prima facie evidence that GS Enterprises marks were not strong. As a result, the Federal Circuit remanded the case to the TTAB to conduct a more thorough analysis of the strength of GS Enterprises’ mark in light of these numerous similar marks.

The Federal Circuit finally noted that the TTAB improperly considered just a portion of Juice Generation’s mark–the PEACE LOVE part–without considering whether the mark as a whole might convey a meaning distinct from GS Enterprises’ marks. As a result, the Federal Circuit also remanded for the TTAB to provide a more thorough analysis of the mark as a whole.

Supreme Court Upholds Brulotte Rule Preventing Post-Expiration Patent Royalties

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

In a 6-3 decision authored by Justice Kagan, the United States Supreme Court in Kimble v. Marvel Entertainment, LLC (No. 13-720) upheld the long-standing rule previously announced in Brulotte v. Thys Co., 379 U. S. 29 (1964), that patentees cannot charge royalties for the use of an invention after the patent covering the invention has expired. Justice Alito, joined by Chief Justice Roberts and Justice Thomas, dissented and would have abolished the rule announced in Brulotte.

We previously discussed the Ninth Circuit’s decision in this case here.


Web BlasterIn 1990, Kimble developed a web-shooting toy that allowed children to shoot foam strings from their hands like Spider-Man. He obtained a patent (U.S. Pat. No. 5,072,856) on his invention and offered it to Marvel Entertainment. Marvel declined, but soon afterwards came out with a similar toy. Kimble sued Marvel for patent infringement, and the parties ultimately settled the case. As part of the settlement, the parties entered into a license agreement that provided an up-front lump sum payment to Kimble along with a perpetual 3% royalty.

Some time later, Marvel discovered the Brulotte decision, which neither side was aware of during the settlement discussions, and moved for a declaration that its obligation to pay royalties expired when the patent expired. The district court, citing Brulotte, sided with Marvel, as did the Ninth Circuit. The Ninth Circuit, however, criticized the rationale of Brulotte, and the Supreme Court took up the case.


The patent statute provides that patent owners have exclusive rights to the use and sale of their inventions for a limited period of time. Once that time expires, the invention falls into the public domain and can be used freely by anyone in this country.

The rule in Brulotte was announced as a way of preventing patent owners from extending their exclusive rights beyond the lifetime of the patent. The concern was that patent owners could use license agreements to force others to pay royalties long after the patent expired, which would artificially extent the lifetime of the patent.

Recently, economists have challenged the anti-competitive basis for the Brulotte ruling and noted that in some instances, allowing post-expiration royalties allows the user to obtain lower royalty rates (albeit spread out of a longer time), which can be pro-competitive behavior.

Justice Kagan, writing for the majority, ultimately decided that the principle of stare decisis controlled the outcome of the case. Brulotte was decided back in 1964 and represented the Court’s interpretation of the patent statute. In the case of statutory construction issues, the Court is disinclined to reverse itself without a significant reason for doing so. She noted that in the more than 50 years since the decision, Congress has not chosen to use its legislative powers to overrule this decision. She also noted that the economic concerns were far from conclusive.

The majority also noted that there were several ways that parties can construct license agreements that meet the limitations of Brulotte. For instance, parties can agree to spread out payments after the expiration of the patent, as long as the use/sale giving rise to the royalty occurred before the patent expired. Parties can also create hybrid agreements that include royalties for other intellectual property (such as trade secrets) if the royalty amount decreases after expiration of the patent.

In the end, the majority felt that there was not a sufficient reason to overrule Brulotte. Therefore, it affirmed the lower court’s rulings that the post-expiration royalties were barred.

The Dissent

The dissent took a different view. They felt that the economic rationale behind Brulotte was flawed and did not deserve deference. They also questioned the notion that Brulotte was decided by construing the patent statute. Instead, they felt that the decision was improper policymaking that should be overruled.

With respect to the particulars of the this case, they were concerned that the parties negotiated a resolution being unaware of the Brulotte rule, only to have Marvel come in afterwards and upset the prior agreed arrangement once it learned of Brulotte. Had the parties been aware of Brulotte during negotiations, they might have reached a different arrangement.


The Kimble decision does not change the state of the law. In a rather unusual move for the Supreme Court in the patent arena, they have maintained the bright-line rule that patent royalties based on actions that occur after a patent expires are not enforceable. Practitioners should be aware of this rule when crafting royalty agreements to structure them in a way to avoid this issue.

Pittsburgh Court Rules on Data Breach Class Claims – Denying Cause of Action

Posted By Henry M. Sneath, Chair of the Cybersecurity and Data Breach Prevention and Response Team at Pittsburgh, Pa. law firm Picadio Sneath Miller & Norton, P.C.  hsneath@psmn.com or 412-288-4013

537047_70437721A Pittsburgh, Pennsylvania Judge has ruled at the trial court level that there is no private cause of action for the alleged failure of a major hospital network to secure and protect PII and PHI. Denying Class claims, Judge Wettick has ruled that because the legislature has not created such a right, that only the Pennsylvania Attorney General has the right to bring a claim in this circumstance. See the Legal Intelligencer article here: http://tinyurl.com/nphostc  We will get more details on this case and pass them along with our analysis.

No Good Faith Invalidity Defense to Induced Infringement, Supreme Court Holds

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

SupremeCourtImage_1The Supreme Court issued another patent law opinion today; this time focusing on whether a good-faith belief that a patent is invalid can be a defense to a claim of induced infringement. In Commil USA, LLC v. Cisco Systems, Inc. (No. 13-896), the Court concluded in a 6-2 decision that the answer is no, reversing the Federal Circuit. Justice Kennedy delivered the opinion for the Court, and Justices Scalia and Roberts dissented. (Justice Breyer took no part in the decision.)


Commil holds a patent relating to short-range wireless networks (Patent No. 6,430,395). It sued Cisco under direct and in6430395 Imageduced infringement theories, contending that Cisco directly infringed by making and using network equipment and induced others to infringe by selling them the network equipment that they used in an infringing manner. Eventually, after significant motion practice, a reexamination at the Patent Office, and multiple trials, Commil prevail on both theories. The Federal Circuit reversed on two grounds. First, it found an error in the jury instructions regarding induced infringement that would have allowed a finding in Commil’s favor based on negligence, instead of actual knowledge. And, second, it found that the district court improperly barred Cisco from arguing as a defense that it had a good-faith belief that the patent was invalid.

The first point was not at issue before the Supreme Court. Only the second issue, whether a good-faith (but ultimately incorrect) belief that a patent is invalid is a defense to a claim of induced infringement. The Supreme Court found that it is not a defense.


The Court first looked at the induced infringement statute, 35 U.S.C. § 271(b), which provides that “[w]hoever actively induces infringement of a patent
shall be liable as an infringer.” Citing its previous decision in Global-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ___ (2011), the Court stated that to be liable for induced infringement, a patentee must show that the defendant knew both of the patent and that the induced acts constituted infringement of the patent.

Before considering the good-faith defense, the Court took time to specifically reject Commil and the government’s position that induced infringement only requires knowledge of the patent. Under Global-Tech, induced infringement requires both the knowledge of the patent and the knowledge that the induced acts infringe the patent. Therefore, a good-faith belief that there was not infringement can be a defense to induced infringement.

Having dispensed with that argument, the Court next turned to the heart of the matter–whether a good-faith belief that the patent is invalid can be a defense. The Court started with the language of the statute, which only is concerned with infringement, and it noted that patent infringement and invalidity are separate issues. It further considered the effect that allowing such a defense might have on patent owners. Under the Patent Act, all issued patents are presumed valid and to allow such a defense would undermine that presumption and its effect. The Court noted that an invalidity defense is not a defense to infringement; it is a defense to liability (although it did note the truism that an invalid patent cannot be infringed). Finally, the Court was concerned that allowing such a defense would only increase the burdens of litigation.

Taken together, it concluded that knowledge or intent regarding invalidity was not relevant to whether someone induced another to infringe.


Justice Scalia, joined by Chief Justice Roberts, dissented. First, they agreed with the majority’s opinion relating to the Global-Tech decision and that induced infringement requires proof that the defendant knew of the patent and knew that the induced acts infringed the patent. They disagreed over the central issue in the case and would have found that a good-faith belief that the patent was invalid is a defense to a claim of induced infringement.

The dissent rejected the majority’s analysis based primarily on the truism that only valid patents can be infringed. If a defendant has a good-faith belief that the patent is invalid, then it would have a good-faith belief that the acts were not causing infringement of a valid patent.

Business Leaders Rank Cyber Risk #2 on List of Main Concerns

Posted By Henry M. Sneath, Chair of the Cybersecurity and Data Breach Prevention and Response Team at Pittsburgh, Pa. law firm Picadio Sneath Miller & Norton, P.C.  hsneath@psmn.com or 412-288-4013

Travelers Business Risk ImageTravelers Indemnity and Insurance released its annual Business Risk Index, which is a survey of the concerns of business leaders and decision makers. Not surprisingly, for 2015, Cyber Risk moved up to the number 2 concern on that list, right behind rising healthcare costs. In some industry sectors it is the number 1 concern. The Banking and Financial Services, Professional Services, and Technology sectors each ranked cyber risks as the main driver of sleepless nights.  The chart on page 3 of the survey is very instructional as to the different concerns between small, medium and large businesses. Small businesses have less concern about data breach than larger businesses, but perhaps small businesses are overlooking their vulnerability and attractiveness as targets. If they care less, they will likely protect less, and become easy targets for hackers. It should be a huge concern for all businesses in all industries as no one appears immune. If you data store or deal in Personal Identifiable Information (PII) or Personal Health Information (PHI) as part of your business, then you are a valuable target. If you have financial or credit information, or trade secrets to protect, then perhaps your competitors, foreign governments and political hackers want to look inside your data. Many insurers are now offering Cyber Risk Insurance to provide defense and indemnity against these risks. Every business should have a data breach prevention and response team of employees and outside consultants and lawyers to audit the company’s vulnerability and to set the plan for a response when a breach occurs.  See the complete Travelers Business Risk Index at: https://www.travelers.com/prepare-prevent/risk-index/business/index.aspx

Updated Resources and Link Section

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

PSMN LogoWe’ve updated our Resources and Links page with more links to helpful intellectual property resources and references for practitioners, inventors, and artists.  If you haven’t looked at this section recently, you should see what we’ve added.

USPTO and US Copyright Office Offer New Tools for Practitioners

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

ComputerThe US Patent and Trademark Office and the US Copyright Office recently announced that some new tools are available to practitioners and interested individuals and companies to help individuals be better aware of recent patent applications and to help explain the fair use doctrine.

The USPTO, in partnership with Reed Technology and Information Services, created an alert system (the Patent Application Alert Service) that allows individuals to receive email alerts whenever a patent application publishes that contains certain keywords. After signing up for the service, a user can set “alerts” based on keywords found in the title, abstract, description, drawings, claims, CPC classification, applicant, inventor, or assignee fields (or combination of these fields). The system then sends out weekly emails whenever an alert criteria has been satisfied.

This system will enable individuals and companies to be better aware of what their competitors are attempting to patent, as well as to keep abreast of changes in the field. The USPTO also hopes that this service will lead to better patents being issued because interested individuals in the relevant fields can monitor patent applications and help identify prior art for pre-issuance submission to the USPTO.

The US Copyright Office has also been busy, creating a Fair Use Index, which is a searchable database of court opinions indexed by category and type of use. The Index currently has decisions reaching back to 1841 and provides a link to the opinion, the relevant court information, the type of medium (photograph, text, etc.), and the outcome. The US Copyright Office created the Index to help the public understand the contours of the fair use doctrine as applied to copyright law. While useful for the public, the Index will also be a useful resource for practitioners.