SCOTUS: Whoever’s on First Denied Cert

The U.S. Supreme Court will not review the copyright infringement lawsuit based on a Broadway play’s use of Abbott and Costello’s “Who’s on First.”

“Hand to God” writer Robert Askins scripted a character to use portions of the famous duo’s comic act – for little more than a minute of the entire play.

Askins’ victory in trial and appellate court, seemingly affirmed by the Supreme Court’s denial, has been called a “vindication of artists’ rights.”

Plaintiffs, TCA Television Corp., Hi Neighbor and Diana Abbott Colton, argue that Circuit Judge Reena Raggi misinterpreted the Copyright Act of 1909 in finding no valid copyright in “Who’s on First.”While the judge did not expressly state that the act is in the public domain, the outcome makes that an implicit possibility. Without a valid copyright, there can be no infringement, so a fair use defense is unnecessary.

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The Billion Dollar Block

In 1958, President Eisenhower was president of the United States, Khrushchev was in charge of Russia and Charles de Gaulle was Prime Minister of France.  NASA was formed that year, satellites were launched and the computer chip, the modem and TV remote controls were invented.

By all accounts it was an amazing year.  But one more amazing thing happened that year, U.S. Patent 3,005,282, titled “Toy Building Brick,” was filed on January 28, 1958.  It covered a series of interconnected Toy Building Bricks.  The patent was issued three years later and was the beginning of an international toy empire for LEGOs.  Lego’s however, didn’t stop with just one patent. Lego filed for many patents to cover its building block business, over 900 patents worldwide with many patents still pending.

In addition, to patents, Lego’s brand is a valuable and famous trademark.  It is instantly recognized around the world and has substantial “goodwill” associated with its brand name.  One of the main purposes of a trademark is to help consumers recognize you as the source of your goods. That recognition is often referred to as “goodwill.”  In fact, Lego owns dozens of U.S. trademark registrations, and many more worldwide, on the marks Lego, Legoland, and other variations.

Lego also values the artistic appearance of its building sets.  Today, more than ever, it is developing unique and artistic models which are subject to copyright protection.  These copyrights are very valuable, because if timely registered, may account for statutory damages of up to $150,000 per work intentionally infringed.

Using patents, trademarks and copyrights, Lego has successfully built a worldwide empire in blocks which is worth billions of dollars.  If you think you have a better invention than a billion dollar block and would like to patent, copyright or trademark it, please feel free to call one of our intellectual property attorneys.

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The Importance of Trademark Goodwill

A “trademark” (less commonly called a “service mark”) can be a single word, phrase, symbol, or design that identifies and distinguishes the source of goods or services.

Some trademarks are a combination of words and symbols, and many evolve over time. For example, Target’s trademark has become a red bull’s eye, now widely recognized by consumers throughout the world without the need for words.

Trademarks allow consumers to readily recognize the quality of a particular product or service, creating a standardized expectation.  This is called goodwill. By using trademarks in marketing and advertising, businesses develop their trademark’s goodwill, increasing consumer recognition and long-term growth.

Trademark laws provide protection for this created goodwill and protect trademark owners by awarding them category specific exclusive rights in the use of their “marks.” Trademark laws not only protect consumers, but also reward businesses who have created a reputation for their trademark goodwill.

Interested in trademark protection for your business? Contact one of our trademark attorneys today at 913.345.0900.

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Music Copyright Law: “Musical Works” and Sound Recordings

Copyright Law: Distinguishing Between Musical Works and Sound Recordings

In general terms, copyright protection extends to “original works of authorship fixed in any tangible medium of expression.” Pursuant to Section 102 of the federal Copyright Act (“the Act”), works of authorship include, among other categories:

  1. Musical works, including any accompanying words; and
  2. Sound recordings.

As these two categories often overlap, understanding the difference between “musical works” and “sound recordings” can be crucial to understanding the scope of copyright protection afforded to each.

Copyright Protection for Musical Works
First, federal copyright law provides for copyright protection in “musical works, including any accompanying words.” The U.S. Copyright Office has interpreted “musical works” to include “both original compositions and original arrangements or other new versions of earlier compositions to which new copyrightable authorship has been added.”
Although copyright protection is usually automatic from the moment a work is created, registering a work with the Copyright Office is a better method of providing others with notice, and can provide more remedies for the copyright owner in case of infringement. The copyright owners of musical works can register their work with the Copyright Office by completing the Performing Arts application form (Form PA), which must be accompanied by a “deposit” of the work to be registered. Depending on the type of work to be registered, the deposit requirement varies from either one or two copies of the “best edition” of the work.

“Best Edition” Requirement
The Act requires that deposits be of the “best edition” of the work. The “best edition” is usually the edition that the Library of Congress determines to be “most suitable for its purposes.”When two or more editions of the same work have been published, the “best edition” is typically the one of the highest quality. For example, the Library of Congress considers compact digital disks to be the “best edition” of a phonorecord, as compared to a vinyl disk or a tape. If the work has only been published online, there are specific rules about the best edition of the work.

Copyright Protection for Sound Recordings
The Act also provides copyright protection for “sound recordings,” which are defined as “works that result from the fixation of a series of musical, spoken, or other sounds.” Sound recordings are typically “fixed” in “phonorecords,” which are the material objects in which sounds are fixed, such as tapes and disks (among other formats). The author of a sound recording is the performer, or the record producer, or both.
The author of a sound recording can register the work with the Copyright Office by completing the Sound Recordings application form (Form SR). When the same person owns the copyrights in both a musical work and a sound recording fixed in a phonorecord, Form SR may be used to register both. There is also a deposit requirement to register a copyright claim in a sound recording, which varies from either one or two copies of the best edition, depending on several factors.

Questions about copyright protection? Call a Copyright Attorney at 913.345.0900.

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Go, Fight, Win: SCOTUS Says Cheerleading Uniforms Are Functional AND Creative

Stuffed miniature mascots in cheerleading uniforms. Monthly calendars featuring cheerleaders. Clothing designed to mimic cheerleading uniforms. What do all of these have in common? They are sold in university gift shops and, under the Supreme Court’s latest decision on cheerleading uniforms, they are likely infringing works.

The US Supreme Court recently ruled that fashionable 2-D and 3-D aspects of clothing, traditionally considered functional, are copyrightable.  Previously, an artist had to make an election to protect creative expression: to seek a limited duration monopoly with a design patent, or a copyright with a longer duration that did not cover functionality. However, the Supreme Court has indicated that now an artist can seek both a copyright for creative aspects and a design patent for functional aspects.

In reaching this decision, the Supreme Court relied upon Section 101’s protections for certain aspects of design where “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  Under this ruling, the designs on cheerleading uniforms can be copyrighted separate from the useful article of the cheerleading uniforms themselves.

One concept of intellectual property law is that usefulness is channeled toward patent protection, as the duration is shorter than copyright protection, thus providing a benefit to society much earlier. As designs on cheerleading uniforms have been viewed as functional – identifying the wearer as a member of a cheerleading squad for a particular team – it has been assumed that such designs were not copyrightable, but should instead receive protection in the form of a design patent.

The decision likely has serious implications for the sporting and fashion industries, as well as other utilitarian applications (e.g. industrial designs). But its effects could ultimately have the largest impact on smaller universities where their budgets are more limited.

Implicit within this decision is that all reproductions and derivative works of the cheerleading uniform designs would likely require a license. Manufacture and sales of toys, photos, clothing, etc. would require a license from the uniforms’ design copyright holder.

Questions about copyright protection or patent prosecution? Contact one of our intellectual property attorneys today at 913.345.0900.

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The MET Announces Access to Free Images

The Metropolitan Museum announced access to nearly 400,000 images – for free. The Museum provides these images under an Open Access license for all public-domain works in the Met collection. The Creative Commons Zero (“CC0”) license allows use of the images without restriction.

Entrepreneurs, artists, and business owners can now use and share these images for free, whether for commercial or non-commercial purposes. So, if you are looking for free images, start with this awe-inspiring collection. Filter your search to public-domain works and look for the CC0 logo. (Note: not ALL images on the Met website are free, but the ones that are licensed under CC0 have been made available to billions of individuals worldwide.)


To further encourage accessibility to creative ideas, the Museum has also announced partnerships with Creative Commons, Wikimedia, Artstor, the Digital Public Library of America, and Pinterest.

Subscribe to the Intellectual Property Center’s blog for more up-to-date info.


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Sprint Wins $140M Patent Infringement

On March 3, 2017, a Kansas federal jury awarded nearly $140 million in damages to Sprint after finding Time Warner Cable (“TWC”) infringed patents on Sprint’s Voice-over-Internet Protocol (“VoIP”). VoIP has become more attractive as Internet companies try to compete with the telecom companies.  The cable companies are offering VoIP via their existing data lines, which are also designed to provide TV and Internet services.

As one of the first providers of telecom over the Internet, Sprint has a number of patents which afford them a monopoly right in this type of technology.  Recently, Sprint has been able to profit from these patents with patent litigation and patent licensing of its VoIP technology, but there is no shortage of competitive patent applications for VoIP.

In a patent lawsuit, patent attorneys may argue literal infringement or non-literal infringement under a legal theory referred to as doctrine of equivalents (“DoE”). Literal infringement is when each element of the claim is present in the infringing device. DoE is used when every element is not literally present, but equivalent results can be achieved through a similar structure providing the same functionality. In Sprint’s patent infringement award, the jury found that each of the patents were valid and infringed. Specifically, the jury found each patent claim at issue was infringed either literally or under DoE. Because the jury found TWC’s patent infringement to be willful, the judge could triple the $140M damages awarded.

Sprint has filed additional infringement claims against other cable companies, including a suit against Comcast currently set to appear before the same judge.

Questions regarding patent licensing or patent infringement? Contact our office at 913.345.0900.

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What is a Patent?

What is a Patent?  Patents are basically ownership of a tool, product, or process and once ownership of a patent is obtained, anyone hoping to use the patent must pay the owner money which is typically provided under license.  This payment is sometimes referred to as a royalty. Ownership of a patent is like owning property and renting it out.  Many people can pay a license under patent, all at the same time.  Using a patent attorney to help registering a patent can be an exceptionally lucrative decision, potentially providing the patent holder millions of dollars per year.

Specifically, a patent is form of property which is typically given by the government to an inventor of a new and useful invention.  In some cases, if the patent rights is licensed to others, it can provide a source of ongoing royaltys for years.  To qualify for a patent, a patent attorney usually submits a qualifying patent application to the govermental and negotiates with the goverment to register the patent.

Under patent law, there are three types of patents registered by the United States Patent and Trademark Office (USPTO). The first and most commonly known patent is the Utility Patent. The Utility Patent can be further divided into a provisional (incomplete) and non-provisional (complete) patent.  Utility Patents apply to functional inventions like machines, apparatuses processes, or compositions of matter, and correspond to the common understanding of patentable subject matter. Patents may also be issued on new varieties of asexually produced cultivated plants and on ornamental designs for a useful invention.

If you have an idea you want to patent or feel that others are using your patent rights without your permission, please contact our office to schedule a meeting with one of our patent attorneys.

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Patent Infringement

How to Stop Patent Infringement

Patent Infringement refers to someone who uses, makes or sells your patented invention without permission. Typically, a patent gives the patent owner the right to obtain a license from anyone who makes, uses or sells the invention, for example your tool, machine or process. To stop someone, the inventor may send a cease and desist letter telling them to stop or the inventor may file a lawsuit to stop them from using the invention without permission, legally referred to as infringing the patent.

The inventor has the right to stop others based upon the patent. This right to stop patent infringement, includes the right to stop them from making, using, selling or importing anything covered by the patent, This right to stop others is a reward for filing the patent application which helps advances society by disclosing to others not only how to make and use the invention but also the best way to do so.

The U.S. patent laws balance the private inventors rights against promotion of society by encouraging inventors to disclose new ideas about their invention to the public. This is done in a patent application, typically prepared by a patent attorney. In exchange for disclosing the new idea, the United States Patent Office can award a patent to an inventor based upon the invention described in the patent application.  

The patent is a legal right of the inventor to exclude others from making, using, selling, offering to sell, or importing the patented invention within the U.S.. The right to sue for patent infringement is just an example of the inventor enforcing the patent. Stated differently, patent infringement is use of the invention by the non-inventor and the inventor who has a patent can stop them. In addition to the ability to stop patent infringement, the inventor can sue for money.

Patent law which allows the inventor to stop the patent infringement, also allows the inventor to demand compensation from the infringer. Specifically, patent law allows the inventor to collect money from the infringer based on a reasonable royalty which the inventor would have charged the infringer for using the invention along with interest and costs. This means, that even if the infringer didn’t want to pay a royalty, the court may order them to not only pay a reasonable royalty, but also interest and the costs associated with having to bring the suit. If you have an invention and would like to determine if it has been infringed or if you would like to discuss potential damages from a patent lawsuit please contact us to schedule a meeting with one of our patent attorneys.

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How to Copyright Music

We meet with many artists who ask how to copyright music.  To many people, music can mean many things. Music may refer to the lyrics, music videos, the music recorded by a sound recording, the musical composition and arrangement, or it may mean the live performance of the music.

The first step in copyrighting music is to determine what exactly is to be protected with a copyright.  Once the particular type of musical work is identified, then we need to look at how is it is recorded.  To be copyrighted, a musical work an original work which is fixed in a tangible form or expression.  If the musical expression is a video, then the video is to be protected.  If the music is on sheet music, then sheet music must be copyrighted.

The process for actually registering the musical work for copyright protection can be as easy as meeting with a Copyright Attorney who will then obtain a copy of the musical work and ask a series of questions related to who owns various copyrights in the music and who will be the owner of the copyright registration.

A musical copyright may also be registered with by the artist with the governmental copyright office for a nominal filing fee.  A copyright registration for music can be very valuable to help stop someone from stealing your music.  If done correctly, the law provides for statutory damages of up to $150,000 per musical work infringed.

While hiring an attorney to copyright music is not cheap, in contrast to the amount of damages you could recover if someone steals your music, it is a small investment for potentially a very large award. Please contact on of our Copyright attorney’s to discuss how to Copyright music.

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