WARNER/CHAPPELL MUSIC LOSES THE ‘BIRTHDAY SONG’

For a simple composition, the ‘Happy Birthday’ song has had a complex history riddled with copyright lawsuits and profit-earning schemes. A Federal Judge in a surprise decision on 22^nd September, 2015 ruled that Warner/Chappell Music never had the right to charge for the use of the song. Warner had been enforcing a copyright since 1988, when it bought Birch Tree Group, the successor to Clayton F. Summy Co., which claimed the original disputed copyright.

The lawsuit against Warner claimed that the company had earned millions of dollars in unlawful licensing schemes. The Judge ruled that the copyright filed by Clayton F. Summy Co. in 1935 granted only the right to various piano arrangements and not the actual lyrics of the song.

Until now, Warner has asked for royalties from anyone who wanted to sing or play the song, with the lyrics, as part of a profit-making enterprise. Royalties were most often collected from stage productions, television shows, movies or greeting cards. But even those who wanted to sing the song publicly as part of a business technically had to pay to use the song. The lawsuit stated that the music company earned approximately two million a year in licensing fees.

Both the parties agreed that the melody of the song, first written as ‘Good Morning to you All’ by two sisters Mildred and Patty Hill, had entered the public domain years ago but Warner still claimed that it owned the rights to the song as per the 1935 copyright claim.

The Judge’s stunning ruling implies that the song is now a public work and everyone is free to use it without the fear of having to pay for it.

Nayanika Singhal 

Costco to Pay

The luxury retailer Tiffany and Co. has triumphed in its suit against the warehouse club Costco Corp. filed on February 15, 2013. Tiffany contended that Costco was engaging in the sale of counterfeit Tiffany diamond engagement rings. In the complaint Tiffany accused Costco of counterfeiting, unfair competition, trade mark infringement, injury to business reputation, false and deceptive trade practices and false advertising. Tiffany contended that Costco had willfully violated the laws and was liable for trade mark infringement and trade mark counterfeiting in its use of ‘Tiffany’ on signs in the jewelry cases at its stores.

The TIFFANY mark has been used continuously for 175 years and enjoys worldwide fame and recognition. Tiffany contended that when Costco used their mark to refer to goods which had no relation to Tiffany and Co. whatsoever, it infringed Tiffany’s trademark and damaged both their customers and their brand. However, Costco defended itself aggressively and contended that the Tiffany ring setting is an ‘industry – standard’ term comprising of multiple prongs extending upwards to hold a single diamond. It denied infringement and asked the Court to prohibit the Plaintiffs (Tiffany) from leveling any false claims of the exclusive right to use the term Tiffany for a style of ring setting.

On September 9, 2015 a U.S. District Judge rejected Costco’s claim that Tiffany is a generic term for a kind of ring setting and ruled that Costco willingly sold counterfeit Tiffany diamond rings and would face a jury trial on October 30, 2015 to determine the damages for trademark infringement and counterfeiting.

Nayanika Singhal