The heirs of the composer of “Santa Claus is Coming to Town” got an early Christmas present from the Second Circuit Court of Appeals. The song was composed in the 1930s. The 1976 Copyright Act allows a copyright owner to terminate a license during a five year period beginning 35 years after the date of execution of the license. The composer’s heirs served a notice of termination on the publisher, EMI. Due to confusion created by the intricacies between pre and post 1976 copyright law, plus the existence of two license grants that were signed 30 years apart, EMI refused to accept the termination. The Second Circuit held in the heirs’ favor. The heirs are going to get holiday royalties until 2029.

TVEyes, Inc. is a database that allows its subscribers to search and aggregate news in the media. Fox News didn’t like that at all. So, Fox News sued for copyright infringement. TVEyes successfully argued that its use of Fox News’ copyrighted material was fair use. The District Court in the Southern District of New York held that TVEyes did not duplicate or usurp the value of Fox News’ broadcasts. TVEyes’ use was transformative because it provides a unique “database of everything that television channels broadcast, twenty-four hours a day, seven days a week”.

When the patent ran out for a Spiderman web-shooter toy, the licensor insisted that he was entitled to royalties anyway. Not so says the U.S. Supreme Court. A patent gives you a right to exclude others from using your invention. But that right only lasts 20 years. In the case of Kimble v. Marvel Enterprises (as in Marvel Comics), Kimble licensed the patented web-shooter toy to Marvel. When a dispute arose over the patent, the parties entered into a settlement agreement that provided for a lump sum payment and a 3% royalty. The agreement was silent about how long the royalty payments would last. When the patent ran out, Marvel got a judgment declaring that it didn’t have to pay royalties anymore. Kimble wasn’t happy and so he appealed. The case went all the way to the U.S. Supreme Court. SOCTUS decided that once the patent expires, the right to royalties expires too. So Marvel didn’t owe any more royalties.

What if you allowed someone to use a trademark that is similar to yours for a pretty long time? The owners of the SMART ONES trademark for frozen foods, snacks and desserts can answer that question. When the owner of SMART BALANCE for heart healthy butter substitutes filed intent to use applications for frozen foods, SMART ONES opposed them citing a likelihood of confusion. The Trademark Trial and Appeal Board (TTAB) sided with SMART BALANCE and allowed the applications to go through. The TTAB found that a lot of factors weighed in favor of a likelihood of confusion, like channels of trade, relatedness of goods, goods sold to the same classes of consumers and a low degree of purchasing care when buying the products. But, the two marks have peacefully co-existed for 17 years with very little evidence of customer confusion.