Court Throws Out Happy Birthday Song Copyright

One of the reasons you never hear the Happy Birthday song at your favorite chain restaurant is due to fear of copyright infringement from performing the song which was written in 1893. Well fear no more. In September 2015, a federal judge in California has ruled that the alleged owner of the copyright in the song (Warner/Chappell) never had the right to charge for use of the song by third parties. The copyright the company relied on was for a specific piano arrangement of the song—not the original song itself.

Originally, the song was entitled “Good Morning to All” and was written by a Kentucky school teacher and her sister. The song gained widespread popularity and eventually became known as the Happy Birthday song when new lyrics were ascribed to it. As recently as this year, companies were paying many thousands of dollars for rights to perform the song. There was no question that the song itself had gone into the public domain—the issue was the Happy Birthday lyrics. Judge George H. King ruled that the sisters who wrote the song never made a copyright claim to the Happy Birthday lyrics. So it is unclear at best who owned the rights to such lyrics and determining that now would be an almost impossible task.

So now you may hear the familiar Happy Birthday tune and lyrics out in public on a much more regular basis. The lyrics have not been formally placed in the public domain, but based on this recent ruling, it is unlikely that there will be any more royalties paid to Warner/Chappell—a company that has received millions of dollars in royalties over the years.

Three Mistakes When Selecting a Trademark Specimen

An important component of a trademark application is the specimen. For both use-based trademark applications filed under § 1(a) and intent-to-use applications filed under § 1(b), the application must include a specimen showing how the applicant uses the mark in commerce for each class of applied-for goods or services.

While filing a trademark specimen should be relatively straightforward, here are three mistakes to avoid when selecting a trademark specimen.

1. Using a specimen that fails to show use of the applied-for mark as a trademark

The purpose of a trademark is to function as a source indicator for consumers. Specimens that show a mark being used as part of a sentence, such as to refer to the goods or services being offered under the mark, that specimen will likely fail.

A recent example of this issue arose in In re Graystone Consulting Associates, Inc., Ser. No. 85913509 (May 12, 2015)In Graystone, the applicant attempted to submit the below specimen as proof of use of its WALK-IN SHOPPER mark in connection with “business training consultancy services.”


The Trademark Trial and Appeal Board held that the specimen did not show a direct association between the mark and the applied-for services. Instead, the mark was used in lower case letters (“the walk-in shopper”), did not stand out from the surrounding text, and referred to individuals as “walk-in shoppers.” This use failed to create the requisite association of the mark with the applied-for services.

2. Using a specimen that shows an altered version of the mark

The mark of the application and mark of the specimen must be substantially exact representations of each other. The USPTO will typically find that if the mark of the application is not a substantially exact representation of the specimen, the specimen fails to show use of the mark in connection with the applied-for goods or services.

Defects related to altered versions of a mark may include plural or compound versions of the mark in the specimen. If the mark includes a design element, minor variations in the design or portions of a design being cut off of a label or tag will raise issues as to whether the mark is a substantially exact representation of the mark shown in the specimen.

3. Incorrectly filing an advertisement as a specimen

Often one of the most readily available specimens is an advertisement or screenshot of a web page advertising a particular good or service. However, advertisements may only be used in specific situations, and applicants must be careful as to when an advertisement may be filed as a specimen.

When a trademark is filed in connection with goods, mere advertisements of those goods are usually unacceptable as an appropriate specimen. There are some limited exceptions to this rule, such as using point of sale materials, but in general specimens that show the applied-for goods bearing the mark provide the best specimen.

Advertisements are usually acceptable to show use of a service mark. When using an advertisement for services, applicants must ensure that the services have actually been offered in commerce before filing a specimen that alleges use of the service mark. The Court of Appeals for the Federal Circuit recently made the importance of this rule clear in Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015). The applicant filed the following web page screen shot as proof of use of its PLAYDOM mark for applicant’s services.



The screen shot advertised the applicant’s service, but during litigation it was discovered that the applicant had not actually provided its services when it filed the specimen. As a result, the trademark registration was cancelled.

While some of these mistakes may be corrected during the application process, in some cases these mistakes can lead to an application becoming abandoned or later invalidated during litigation.

The First Step In the Patenting Process Is . . .

A common question we receive is, “What is the first step in the patenting process?” The answer to this question depends on a number of factors.

A first consideration is whether any looming statutory deadlines apply. For example, if you have been offering your inventive product for sale, you must file a patent application within one year of the first sale or offer for sale of the product. So, do not wait to seek advice on patent protection—move swiftly and with purpose. If you have very limited time before a patent application must be filed, then a first step might be to quickly file a provisional patent application. It is probably a good idea to have a patent attorney at least review the document before it is filed because such document will be the foundation for any later-filed nonprovisional application. If the foundation is weak, there may be problems ahead.

If you have some time to spare with no looming statutory deadlines, another option would be to have a patent attorney conduct a patentability search for you to determine whether your concept is novel or not based on prior patent publications. The cost for this type of search is usually 1/3 to 1/4 the cost of having a full nonprovsional patent application prepared and filed. It’s a means to hedge your bets. If the patent attorney’s search results are promising, you have spent additional money but you have more confidence in investing additional funds to move into the next phase of the patenting process. If, on the other hand, the search results demonstrate that your concept is not novel, you will have saved yourself at least a few thousand dollars by not going straight to having a nonprovisional patent application prepared and filed.

An alternative to having a patentability search conducted would be to move forward with filing a provisional patent application. A provisional application is less formal than a nonprovisional application and is considerably cheaper. The downside is that a provisional application is only temporary—it is a means to buy more time before you must file a nonprovisional patent application. The additional time provided by a provisional application can be up to one full year. During that one year period, you may be able to locate potential investors or interested buyers. Alternatively, the additional one year provides time to perfect the invention and work out any kinks.

There is no requirement that a patentability search be conducted or that a provisional patent application be filed. What is always necessary to move forward in the patenting process, however, is the need to file a nonprovisional patent application. This is an expensive step in the patenting process. The nonprovisional application will include claims that define the metes and bounds of your invention. We usually suggest to our clients that they have us conduct a patentability search before we prepare and file a nonprovisional application because the search could ultimately save the client money depending on the search results.

To recap, the best first step in the patenting process is different for different factual circumstances. Sometimes the factual circumstances are such that a provisional patent application should be filed first. Other factual situations may dictate that a patentability search should be conducted. In rare cases, it may make sense to go straight to moving forward with a nonprovisional patent application. Regardless of what is the right first step for you, one thing you should always do is move forward with purpose and not delay. A good first step would be to meet with a patent attorney and have the attorney consider your unique situation and offer suggestions on how best to move forward.

Three Common Mistakes Made by Startup Companies

  1. Undercapitalization

Before building a tower, consider the cost. Many startup companies start with great intentions but their forecasts for revenue generation are too optimistic and there is not enough capital to sustain the business until it becomes established. Another related issue for companies seeking investors is failure to ask for enough money. Ask for what is needed with an eye toward some rainy days ahead.


  1. Failure to Protect Intellectual Property

Patent protection is what most companies think of when it comes to intellectual property and owning a patent is a great way to exclude your competition. However, companies that are not eligible for patent protection often assume that intellectual property is not something for them. In the process, trademarks and copyrights are overlooked. Every company has access to intellectual property rights—it’s just a matter of finding what you can protect for your company. Assume you have something worth protecting, find out what it is, and take the steps to formally protect your intellectual property.


  1. Not Finding the Right Market

Most companies offer a product or service that meets the needs of a particular market or group of people. Identifying that group is crucial in establishing early sales and driving a consistent stream of revenue to the company. When a company fails to identify a particular and correct target market, marketing efforts are spread too thin and the company message is not communicated efficiently to the people that need to hear it. Find your niche and drive your message home in your target market.

Patent Infringement Liability for Component Manufacturers

A component supplier may manufacture a particular component to be used as part of a customer’s larger system or device and expect that any potential infringement liability would reside with the customer. However, patent holders frequently pursue not only direct infringers but also the infringer’s suppliers in patent infringement lawsuits, seeking to recover damages from all parties involved. These threats of patent infringement catch many component suppliers by surprise because suppliers may not expect that they could be liable for uses of its components by its customers downstream in commerce.

The Patent Act provides a cause of action for “contributory” infringement, under which a supplier of a component that constitutes a material part of a patented invention may be liable for contributory infringement. Finding contributory infringement requires showing that the supplier knew that the supplier’s component was being used in a product that infringed the patented invention. Plaintiffs will often attempt to establish the knowledge requirement through a cease and desist letter to suppliers.

What does this mean for suppliers? It means that suppliers and manufacturers should not simply rely on their customers to do due diligence with respect to any potential infringement issues. Suppliers should consider performing at least a cursory review of potential infringement issues before supplying its components to customers. If a supplier learns of a patent that may be asserted against them, an opinion regarding non-infringement and invalidity should be obtained from competent counsel.

Patents, Trademarks and Copyrights: What’s the Difference?

The differences between patents, trademarks and copyrights are not obvious to the casual observer, and these terms are often intertwined or misused with one term for the other. To set the record straight, here are some practical ways to think through the differences between these types of intellectual property.

Patents are rights bestowed by the federal government to inventors of a new utilitarian apparatus or process, a new design, or a new plant variety. The patenting process is a formal application process that must be made through the U.S. Patent & Trademark Office. The patent right is the right to exclude others from making, using, selling, offering for sale or importing whatever is claimed in a particular patent. The term of a utility patent is 20 years from the filing date of the application.

Trademarks are symbols used to designate a source of a good or service. An important function of trademark law is to protect the consumer so that consumers can be confident in the sources from which they buy goods or services. No formal application process is required to obtain trademark rights. However, there are many good reasons to consider taking formal steps with the U.S. Patent & Trademark Office to protect your trademark through a formal application process. Trademarks have no expiration date.

Copyrights protect the expression of information when such information is placed in a tangible medium of expression. Examples include photographs, art work, music, books and computer code. No formal process is required to obtain copyrights in your original works of authorship but, as with trademarks, there are many good reasons to consider taking formal steps to register your copyright. Compared with patents and trademarks, the registration of copyrights is relatively inexpensive. The term for a copyright is typically the author’s life plus 70 years.

Patent Protection Is Not Always the Best Option

When a new technology is developed, obtaining a patent often becomes a priority. There are some situations, however, in which seeking patent protection is a less desirable option. One of those situations is when a technology is developed that cannot easily be reverse engineered—a technology that can be kept secret.

A classic example of this is the formula for Coca-Cola. Had the Coca-Cola Company sought patent protection, their patent would have expired in the early 20th century. However, because Coca-Cola knew that its formula could not be easily reverse engineered, the company opted to rely instead on trade secret protection. Now, well into the 21st century, Coca-Cola still has a secret formula and a brand that is very valuable.

A key to trade secret protection is in its name—keeping your technology secret. If a technology is in public view or can otherwise be easily reverse engineered, it’s very difficult to keep the technology secret. In such a situation, patent protection is preferable. The life of a patent is limited and extends 20 years from the filing date of a nonprovisional patent application assuming all maintenance fees are paid. In some cases, the term may be extended due to delay by the U.S. Patent Office during patent prosecution. In any event, the life of a patent has a definite ending point. Trade secrets on the other hand have no expiration. So if you have a new technology that can be kept secret with proper controls, you may want to seriously consider relying on trade secret protection instead of patent protection.

Do I REALLY need to register my copyright?

Many artists and creative product producers are aware that ownership of a copyright occurs automatically when an author of an original work places that work into a tangible medium of expression. Because this happens automatically, many feel that taking the extra step of registering their copyright with the U.S. Copyright Office is an unnecessary extra step. Regarding ownership, this is true. There is no need for an author of an original work to register the work in order to own the copyright in the work.

The issue changes, however, when an author desires to enforce his or her rights against a third party. In order to properly file a lawsuit to enforce a copyright, the filer must have at least first filed to register the work with the U.S. Copyright Office. Some federal jurisdictions even require that the work be registered before suit can properly be filed.

Perhaps the most important reason to register a copyright in a work is to be able to benefit from the statutory damages provisions of the U.S. Copyright Act. If a work is properly registered before infringing acts occur, the owner of a work can elect statutory damages instead of having to prove actual damages. This can save a tremendous amount of money in litigation. Statutory damages can range as high as $150,000 per registered work if the infringement is shown to be intentional.

It is tempting to think, “I’ll register my work if and when someone infringes it.” But this plan won’t afford you the benefit of statutory damages. In order to be able to benefit from the option of statutory damages, a work must be registered before infringing acts occur, or at least before knowledge of those acts occurs. So the idea of waiting won’t work. The drafters of the statute purposefully included this caveat to attempt to encourage authors to go ahead and register their original works of authorship. So, do you really need to register your copyright? If you want to benefit from the statutory damages provisions of the U.S. Copyright Statute, the answer is “yes”.

Do You Need To Register Your Trademark?

Under the common law, trademark rights arise by use alone, so it is possible to gain trademark rights in a trademark by simply beginning to use it for your goods/services. However, there are a number of benefits to hiring a trademark attorney and registering your trademark at the federal level.

The first of these benefits is a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide for your listed goods/services. Another benefit is the public notice function of being able to use the registration symbol, ®, to demonstrate that you have a federal registration.

Another consideration prior to launching a brand of goods or services is to have a clearance search to see if your mark is available for your selected goods/services. Often, businesses launch and invest money in marketing for a particular mark only to find out later that the mark is already in use by another company. This realization sometimes comes in the form of a cease and desist letter from the owner of the trademark who has priority of use. This can cause a great deal of waste, all of which can be avoided by investing in a preliminary trademark search.

And all trademark searches are not equal. Simply searching for federally registered marks may miss vital information. For example, another company may have a state registration but not a federal registration. The state registration can be just as dangerous as a federal registration. In fact common law trademark use can be used to cancel federal trademark registrations if the common law user has priority and there is a likelihood of confusion between the applicable trademarks. As such, it makes sense to hire a professional to conduct a comprehensive clearance search covering federal, state and common law trademarks. If the search is clear, the next step should often be to attempt to register your trademark at the federal level and enjoy the benefits of a federal trademark registration.