Newsletter Issue 52 - June 2013

In this issue:

Ask Dr. Copyright ... Happy Birthday to Dr. Copyright

Dear Doc:
I took my daughter out to dinner for her birthday at a local eatery (that's what they call a restaurant when they want to charge more for the same old burritos) and at the end of the meal, all of the servers gathered around, slapped a sombrero on her head, and sang some stupid birthday song set to the tune of "La Cucaracha". Not that I have anything against insects, mind you, but why, oh why can't they just wish the kid happy birthday in the traditional American way? The manager claims that he does not want to pay royalties to Warner Music for publicly performing a copyrighted song. So, what gives? Do we get to sing "Happy Birthday" to my kid before she is ready to collect Social Security?

Signed,
Happy Birthdad, to you.

Dear Hap,

I share your pain and frustration over this issue of burning importance, and so, apparently, does a newly formed company called, "Good Morning to You Productions Corp." That company has filed a class action lawsuit against Warner/Chappell Music seeking the return of millions of dollars collected in royalties, and a determination that Happy Birthday To You is no longer protected by copyright.

The company is making a documentary film about the history of Happy Birthday. They were told by Warner that if they wished to use the song in their movie, they would have to pay $1,500.00 for a "synchronization license." Fail to pay, and the law says that you may have to cough up as much as $150,000 in statutory damages. Chump change for Lucas or Spielberg, but for churchmouse-poor documentarians, that's an awful lot of ramen noodles. So, in a wonderful case of art-imitates-life-imitates-art (or some such existential nonsense) GMTYPC hired lawyers to go after big, bad Warner/Chappell.

Here, in a nutshell (or at least a complicated paragraph) is what they claim: In 1893, Patty Smith Hill and Mildred Hill wrote a ditty called, "Good Morning To All." They sold the rights to the song and it appeared in a book called "Song Stories for the Kindergarten" which was registered for copyright in 1894. Years later, the words "Happy Birthday" were substituted for "Good Morning" and in 1911, the Board of Sunday Schools of the Methodist Episcopal Church published the full "Happy Birthday" version, referencing a book called "Song Stories for the Sunday School" by Patty Hill. The Church filed for a copyright on this in 1912. According to the plaintiff, all of those copyrights either expired or were never renewed. In 1924, these lyrics appeared in another published song book. In 1935, a piano arrangement of the song was published. Under the current copyright law, works published after 1923 get 95 years of protection. But, GMTYPC alleges in its law suit that it has "irrefutable documentary evidence" (which is a good kind of evidence for a documentary film maker to have) that if there was ever a valid copyright on Happy Birthday To You, it expired in (drumroll) 1921, and all that Warner/Chappell ever owned, if it had anything, is a right to copy and distribute that 1935 piano arrangement. Period.

So what does GMTYPC want? They say that a class of everyone who has paid Warner/Chappell exists, and that Warner/Chappell collects more than $2 million per year in royalties on Happy Birthday - and that they class should get its money back (less, of course, really big legal fees). They want the court to declare that Happy Birthday is no longer protected by copyright and is in the public domain. And a bunch of other legal stuff.

As for the Doc, he can't wait for the movie to come out...who knew that copyright law could be as thrilling as The DaVinci Code?

Have a copyright or other intellectual property law thriller? Ask the attorneys at Lipton, Weinberger & Husick - they're pretty thrilling folks in their own right!

Protecting the Latest Food Sensation

OMG, I have to try one of these.... That appears to be the general consensus about the so-called "Cronut," the new New York City food sensation. Early morning lines stretch around the block with customers lining up to buy this croissant-donut hybrid two hours before the Dominique Ansel Bakery in SoHo opens. It's so wild that scalpers are selling the $5.00 (!) snack for $20.00 or more (!). Most recently, there's a black market of sorts selling Cronuts -- authentic and fake -- on Craigslist. Cronut copies have been found in Australia. Ansel's bakery, which originally limited purchases to 6 Cronuts per person, now limits customers to 2. Huffington Post wrote:

As it turns out, the baked good's allure maybe less about flavor and more about the cachet that comes with a rarity. In less than a month on the market, the cronut has turned into the ultimate grand gesture, appropriate for any occasion, and a burgeoning form of social currency - an object proffered in a bid to ingratiate oneself with a potential business partner, perhaps, or in atonement.

The term CRONUT has not been widely copied, perhaps because the owner of Ansel's Bakery filed a trademark application for the name with the United States Patent and Trademark Office ("PTO") and, according to one report, in five other countries. Ansel said he could justify the cost with just a couple of days of sales. One of Ansel's competitors was considering filing a trademark application for DOUGHSSANT but couldn't justify the cost of defending the trademark if it was issued. Other bakeries are considering filing their own trademarks but Ansel's lawyer "isn't amused" at the trademark rush and "will be taking action as she sees fit." Keep in mind, however, that trademark law does not protect the recipe or invention, only the name. To sue someone for infringing the name, Ansel's attorney would have to prove that the name caused confusion in the market place over the source of the pastry. CRONUT and DOUGHSSANT are hardly confusing, so good luck challenging that. On the other hand, another application filed for CRONUTS by a party apparently not related to the Ansel Bakery, is confusing and will likely be rejected by the PTO. Now that's a waste of money.

This raises the issue of how do you protect a recipe from being stolen? The short answer is that it's difficult. Trademark law doesn't work and copyright law does not protect recipes. One may be able to obtain a patent to protect a foodstuff or process for making the foodstuff, but only if the process or the food stuff is "novel" and "non-obvious." Novelty and non-obviousness are tough standards for food because people have preparing food for as long as there have been people. Other reasons not to patent a recipe are that a patent requires public disclosure and in time expires. The Coca-Cola Corporation successfully protects its famous soda recipe by simply keeping it under lock and key. The patent route doesn't seem effective for a food fad. Look for variations of the Cronut under a different name at your favorite bakery. They may be just as good (maybe better).

Patentable Subject Matter, the Sequel

In the issue that will not die, the Supreme Court again considered what can or cannot be patented. This time the question was whether human genes can be the subject of a patent.

The U.S. Constitution at Article One, Section 8 gives Congress the power "to promote science and the useful arts, by securing for limited times...to inventors the exclusive right to their...discoveries." Congress exercised that authority in Section 101 of the patent statute, which authorizes patent protection to "[w]hoever invents or discovers any new and useful... composition of matter." In the past, the Supreme Court has created exceptions preventing patenting of laws of nature, natural phenomena and abstract ideas.

Myriad Genetics discovered the precise locations of certain genes, the mutation of which increased the risk of certain cancers. The U.S. Patent and Trademark Office issued patents to Myriad for the genes. The Federal Circuit Court of Appeals agreed that Myriad's discovery of the genes was patentable.

The Supreme Court decided that the naturally occurring genes that Myriad located and isolated are a 'product of nature,' fall within the 'law of nature' exception and are not patentable; however, genes that were modified by Myriad are patentable.

Naturally-occurring materials are staples of biotechnology patenting. Because of the complex questions involved, the transactional costs for the industry to identify and investigate the effects of the Myriad decision will be very high. We can anticipate that the value of companies holding patents to naturally occurring biological materials may be affected.