Pre-72 Sound Recordings not subject to DMCA

Under New York state law a decision issued last week holds pre-1972 sound recordings are not subject to the DMCA safe harbor provisions and Grooveshark is liable for state law copyright infringement of UMG owned pre-1972 sound recordings.  UMG Recordings, Inc. v. Escape Media Group, Inc.  Opinion linked here.

The year the sound recording was released is key to UMG’s argument.  Prior to February 15, 1972 sound recordings were protected by state law copyright schemes.  All sound recordings released after February 15, 1972 are protected by Federal Copyright Law.

Grooveshark continues to hide under the protection of the DMCA (Digital Millennium Copyright Act) Safe Harbor provision claiming it didn’t know that content uploaded by third parties was infringing and had been uploaded without permission.   I believe the judges’ decision was correct.  If the pre-72 sound recording owners do not receive any of the protections of the Federal Copyright Act such as the ability to recover attorneys’ fees or sue for statutory damages, then why should an infringer receive defensive benefits from the Copyright Act?

Because this decision was issued by the New York State Appellate Court, that court had no obligation to follow a footnote in  Capitol Records, Inc. v. Mp3 Tunes, LLC, 821 F.Supp.2d 627 (S.D.N.Y. 2011) in which the court states in dicta:

This Court agrees with [Mp3 Tunes, LLC] the plain meaning of the statutory language makes the DMCA safe harbors applicable to both state and federal copyright claims. Thus, the DMCA applies to sound recordings fixed prior to February 15, 1972.

UMG made a great tactical decision in keeping their pre- and post-72 sound recordings separated in their legal filings.  A state court was the appropriate venue to decide if the DMCA applies to sound recordings that are not otherwise protected by the U.S. Copyright Act.

Michael “Qiaodan” Jordan Sues Chinese Company for Trademark Infringement

This week starts Michael Jordan’s trademark trial against Chinese sportswear company Qiaodan Sports Co. Qiaodan translates in Mandarin to mean Jordan.

Qiaodan Sports sells basketball shoes and jerseys with Qiaodan and  #23.  If Jordon wins this case, he will use his proceeds to promote basketball in China.

Drybar vs Blow Dry Bar – Trademark for Blow Drying Hair

Blow Dry Bar – Houston

While in LA  I marveled at all the hair salons for blow drying hair.  Who knew these salons were all over Texas.  And, as much as we Texas gals like our hair fixed, it does seem like a natural fit.

Houston, Texas-based Blow Dry Bar, LLC seeks a declaratory judgment of  non-infringement against  Dallas, Texas-based DryBar Holdings, LLC’s trademark and trade dress.  DryBar sent several cease and desist letters to Blow Dry Bar after Blow Dry Bar launched their first location and announced the opening of their second store. DryBar’s founder Alli Webb has been credited by many as creating the “blow dry salon” trend.

The term “blow dry bar”  is descriptive at best and is quickly becoming generic for a hair salon that provides “blow drying.”  A consumer sees blow dry bar and immediately knows the service available.  Perhaps salons should start thinking less descriptive in order to develop a strong and defendable brand.  The case, filed in 2012, is still active with a hearing on a Motion for Summary Judgment scheduled on April 25, 2013.

Blow Dry Bar, LLC v. Drybar Holdings LLC, 4:12-cv-02425 (S.D. Tex – Houston, filed Aug. 8, 2012).

JCP Seeks Dec Action of Trademark Non-Infringement

Plano, Texas-based retailer, JC Penney Corporation, Inc., asked a judge in Texas federal court to find JCP’s use of the name Aspen to describe a pair of winter boots is not infringing of Aspen Licensing International, Inc’s “Aspen” trademark for footwear.

By filing a declaratory judgment action, JCP kept the case in the Eastern District of Texas requiring Aspen Licensing, a Florida entity, to come to JCP’s home court.  According to court documents, Aspen sent several demand letters to JCP and made phone calls threatening litigation if JCP did not make a monetary settlement.

J. C. Penney Corporation, Inc. v. Aspen Licensing International Inc., 4:13-cv-00066-RAS-DDB (E.D. Tex. filed Feb. 8, 2013).

Frito Lay Lost Chip Design Trademark and Patent Infringement Case

Plano, Texas based Frito Lay, Inc. was unsuccessful in their claim that Ralcorp Holdings’ snack chip infringed the “Scoops” design trademark or patent for the process of making a formed snack chip.  The jury’s decision of  non-infringement may give the go-ahead to other snack food manufactures to begin offering similarly shaped chips.

In addition to losing the lawsuit, Frito Lay may be on the hook for costs and attorneys’ fees.  Ralcorp Holdings filed sealed documents related to costs and fees on April 18, 2013.

Frito Lay sued in the Texas Eastern District Court in 2012 for trademark infringement, trade dress infringement, unfair competition and dilution under the United States Trademark (Lanham) Act; patent infringement under the patent laws of the United States; for trademark dilution under Texas Business and Commerce Code § 16.29; and for trademark infringement, unfair competition, and unjust enrichment under Texas common law.

A mediator was appointed in this case, but according to court records it does not look as if mediation occurred in this trademark lawsuit.

Frito-Lay North America, Inc. v. Medallion Foods, Inc., 4:12-cv-00074-ALM (E.D.  TEX. – Sherman), April 4, 2013 final judgment entered.

Levi’s “Red Tab” Protected Trademark in EU

Levi Strauss sued and succeeded in a claim of trademark infringement against a  German competitor that attached a “red tab” to its jean pocket.

In the US, Levi Strauss has been using the “red tab” since 1936  on pants/overall pockets.  In the US the “red tab” federal trademark registrations from 1936 do not mention the word “LEVI’S” on the tab.  The concern raised in the recent dispute with German company Colloseum Holdings was that Levi Strauss does not offer jeans in the EU with only a “Red Tab.”  The tab always includes the word “LEVI’S.”

RG3 vs RGIII Trademark Dispute

Research Group 3, Inc., known by its brand and common law trademark RG3, may oppose the trademark application filed by football star Robert Griffin III for the mark RGIII for clothing items.

Research Group 3, a motorcycle parts company, claims in its trademark application use of the mark RG3 for clothing items since 1999.  But, Research Group 3 only filed a trademark application in January 2013, months after Robert Griffin III filed his application.

We should know next week if the parties worked something out or if an opposition will proceed with the Trademark Trial and Appeals Board.

Pandora Tops 200 Million Users – Should Streaming Services Pay Lower Royalties?

With Pandora’s topping of 200 million users, surely they can develop a business model to increase their revenues instead of decreasing their payments to copyright owners.   I am a fan and user of Pandora’s services.  Do I enjoy the ads that are inserted between songs on the “free” Pandora- no. But, I think most people enjoy Pandora enough that listening to a few ads can become the new normal to the free streaming radio experience.    If you don’t like ads, opt for a premium ad-free service.

The fastest growing area of consumer consumption of music is streaming.  See BBC News, “Streaming music revenues up 40% globally in 2012,” Aug. 15, 2012. 

Revenues from music subscription services and streaming services collectively went from just 3% of total industry revenues in 2007 to 15% in 2012, totaling over $1 billion for the year.  Distributions for digital performance royalties from SoundExchange, which include payments to performers and copyright holders for webcasting, satellite radio, and other non-interactive digital music services, increased 58% to $462 million in 2012.

RIAA 2012 Year-End Shipment Statistics.

Pandora and IHeartRadio are the two leading internet radio services in the US.  According to reports by Triton Digital, in May 2012 Pandora held 74.2 percent of the daytime internet radio services to IHeartRadio’s 13.6 percent.  See Glenn Peoples, BILLBOARD, The Next Digital Battleground, Vol 124, No. 25, at p. 22.  Because internet radio is not interactive, meaning the user cannot choose the track or artist they wish to hear, license fees for use of the sound recording are pre-determined and are paid by the internet radio stations to Sound Exchange as a digital performance royalty.

Pandora continues to lobby in support of the Internet Radio Fairness Act, a bill that would change the standard by which the Copyright Royalty Board sets the statutory rate for the digital performance of sound recordings.  In effect, Pandora wants to reduce payments to Sound Exchange which directly decreases royalties paid to artists, musicians, and sound recording copyright owners.

In November 2012 Pandora sued ASCAP, the largest of three Performance Rights Organizations in the United States, to lower Pandora’s rate for public performance royalties paid to music publishers and songwriters each time a song is streamed.

Internet radio and streaming services are clearly part of the future of the music business.  Should copyright owners, artists and songwriters continue to see a decrease in royalties when these businesses thrive?

“When The Band Gets Divorced – Mediating The Band Partnership Dispute”

“When The Band Gets Divorced – Mediating The Band Partnership Dispute”
1 hr CLE pending

Join attorney/mediator Tamera Bennett at the Belo Mansion at Noon on Wednesday, March 27, 2013 for a discussion on common issues band members mediate when a member departs and/or the band dissolves.

We’ll be taking a look at the “Sugarland” partnership dispute, the recent “En Vogue” dispute, as well as the “J Geils Band” dispute and applying those fact patterns to structuring a successful mediation for your client.

Dallas Bar Association
Belo Mansion
2101 Ross Avenue
Dallas, Texas 75201
214-220-7400

Will Play for Tips: Legal Tips for Musicians/Artists/Songwriters at 35 Denton

SATURDAY, MARCH 9TH at 35 Denton
3:00 PM – 4:30 PM (UNT on the Square)

Will Play for Tips: 5 Legal Tips for Musicians/Artists/Songwriters

Join the Dallas Bar Association Sports & Entertainment Law Section for a panel presentation on March 9 from 3:00 PM – 4:30 PM at UNT on the Square, 109 N. Elm St. Denton, TX 76201.This introduction to legal issues in the music business panel will help you answer questions such as Who owns my song? Do I need a lawyer? How do I protect my brand? That’s “fair use,” right? and Can’t we all just get along? Join us for a discussion covering copyright law, trademark law, business structure for the band and other music business legal basics.Participants in the panel include:Tamera H. Bennett, Bennett Law Office, PC/Farm to Market Music, LLC;  Catherine Hough, Ferguson Law Group; Evan Stone, Law Offices of Evan Stone; Kevin Harrison, Kevin Harrison Law.

Free and open to the public. 1.5 hour MCLE pending.

In the Mix Denton Networking Event March 8, 2013

Kick off 35 Denton 2013 networking with the people who make music happen in Denton and the DFW area. In The Mix Denton is a networking opportunity for artists, producers, engineers, songwriters, attorneys, accountants, managers, booking agents and members of The Recording Academy® (the “Grammy®” folks).

Join your hosts, Recording Academy Texas Chapter Board Members, and learn how you can be involved in The Recording Academy.To RSVP, click here.

GRAMMYs At The Texas Capitol 2013 – update #txgrammys

The Recording Academy^® Texas Chapter’s first bi-annual event, GRAMMYs At The Texas Capitol, took place yesterday, February 26, at the State’s Capitol. Approximately 30 participants lobbied on behalf of the membership including Chapter Trustee, Paul Wall, National Vice Chair of the Board Of Trustees, Christine Albert, Chapter Governor, Terry Lickona, as well as GRAMMY^® winner Ray Benson, country music artists Jack Ingram and Josh Abbott, as well as NBC’s The Voice finalist, Nakia. The resolution in the Senate and House deemed February 26, 2013 as Texas GRAMMY Music Day.  This special day was sponsored by Texas Senators: Robert Deuell (R) and Leticia Van de Putte (D), and Texas Representatives: Myra Crownover (R) and Ryan Guillen (D).

Led by group members Todd Dupler, Director of Government Relations for The Recording Academy; Advocacy Chair Tamera Bennett; Advocacy committee members R.C. Rondero de Mosier and Ricky Anderson; and Sr. Executive Director Theresa Jenkins—the Texas Chapter met with policy makers to lobby for economic development and support for Arts education in public schools. Additionally, the group raised awareness about The Recording Academy’s concern for Intellectual Property and Piracy issues in the state of Texas.

Read more here.

GRAMMYs At The Texas Capitol – February 26 2013

Very excited to participate in the GRAMMYs At The Texas Capitol advocacy event on February 26, 2013.

The Recording Academy^® Texas Chapter announced today the details for GRAMMYs At The Texas Capitol, its first bi-annual event set to take place at the Texas Capitol in Austin on February 26. One of 12 regional Chapters that link The Recording Academy to its membership, the Academy’s Texas Chapter will meet with legislators to raise awareness of the recording arts’ economic and cultural impact on Texas and showcase the organization’s diverse membership.

“We’re thrilled to bring to light all the different ways the Texas Chapter promotes educational programming, professional development and networking opportunities to its membership,” says Theresa Jenkins, Senior Executive Director. “We’re here to unite the Texas music community and showcase all we do to legislators to garner their support for our initiatives.”

On February 26, Texas Chapter Board Members and influential Texas music professionals will participate in meetings and presentations with policy makers to lobby for economic development and support for Fine Arts education in public schools. Jenkins and Tamera Bennett, the Advocacy Committee Chair, along with organization’s National Vice Chair, Christine Albert, Chapter Trustee Paul Wall and Chapter President Eric Jarvis will spearhead the event. Other members representing the Chapter are recording artists Jack Ingram, Josh Abbott,  Ray Benson, and Nakia. Media are invited to attend the morning meeting at the Stephen F. Austin Intercontinental Hotel VIP Lounge to hear the strategy before the organization heads to the Capitol. The day ends with a reception at Sholtz Garten where key legislators, House committee members and Texas Chapter members will convene.

More than just the GRAMMY Awards^®, The Recording Academy is a full-service membership organization for music professionals with 20,000 members in its 12 Chapter cities. The Texas Chapter works on a number of programs year-round including the GRAMMY Block Party^®, an annual membership celebration during the SXSW festival; the GRAMMY Camp^®- Basic Training, a series of panels focused on music education, archiving and preservation (hosted at local high schools); GRAMMY U^®, a variety of programs and events for college student members of the organization and Professional Development events tailored to the needs of the local membership.

Texas Chapter members are invited to attend the Advocacy Reception at the end of the day at Scholz Garten in Austin, Texas from 5 – 6:30 p.m. For information and to RSVP, please visit the Texas Chapter event page at GRAMMY365.com.

Sherlock Holmes, Elementary, Copyright Protection and Trademarks

“It’s elementary my dear Watson, Sherlock Holmes might still have copyright protection.”  Not precisely the definitive answer one expects from Sherlock’s reasoning of all things – even the intricacies of copyright law.

The recent  lawsuit filed against the estate of Sir Author Conan Doyle might bring out  heirs of other great works created in the late 1800′s and early 20th century to see just how long copyright protection can be stretched.

The character of Sherlock Holmes  first appeared in publication in 1887 and was featured in four novels and 56 short stories spanning until 1927.  According to US Copyright Law, the works written and published prior to 1923 are in the public domain. That means the characters, story lines and plots are free for use.  The Estate asserts the works between 1923 and 1927 are infringed by the book In the Company of Sherlock Holmes scheduled for publication by Random House.  In order to head-off an infringement suit, author/editor Leslie Klinger filed a declaratory judgment action asking the Judge to find the copyright on certain works featuring Sherlock Holmes and certain elements of the stories has expired.

The Complaint filed does a great job laying out the facts regarding when certain elements were first used in the Sherlock Holmes stories and why those elements are in the public domain.

Read more from the The Hollywood Reporter ESQ blog and TechDirt.

Also visit the Conan Doyle Estate website to see which Sherlock Holmes projects have been “licensed” or “authorized.”

On another interesting note, the Conan Doyle Estate Limited has been busy filing  trademark applications for the brand SHERLOCK HOLMES.  In 2010 the estate filed six intent to use trademark application featuring the name SHERLOCK HOLMES.  Based on US Patent and Trademark office filings, none of these trademarks are currently in use by the Estate.  The image above of Holmes with the Pipe is a registered trademark of the The Sherlock Holmes Memorabilia Company.  According to the Conan Doyle Estate Website, the Estate is pursuing cancellation of this trademark registration.

Super Bowl, Harbowl and Kaepernicking – Trademark Update

The NFL is more than diligent in protecting its SUPER BOWL brand, along with the  SUPER SUNDAY brand.  With the amount of money spent on the brand, I often say more power to the NFL in protecting their rights and protecting consumers from inferior infringing products.

The NFL has stepped up their protection efforts to block trademark registrations filed a year ago by football fan Roy Fox for “Harbowl” and “Harbaugh Bowl.”   Roy was planning on a head-to-head match of brothers and coaches  Jim Harbaugh and  John Harbaugh.  Roy’s goal was pure and simple:  profit off someone’s name. This is where the trademark laws do work.  While I’m not sure the NFL was the correct party to oppose Ray’s trademark filings, either Harbaugh brother had grounds to stop a registration from being issued.  In my mind consumers would believe that either or both brothers had consented to the use of their names and/or endorsed the products that would be sold.    Both trademark applications have been abandoned.

Colin Kaepernick, the San Francisco 49ers quarterback filed trademark applications for KAEPERNICKING, KAEPERNICK7,  KAP, KAP7, KAEPERNICK CK7, COLIN KAEPERNICK all in Class 025 for clothing items.  None of the marks have actually been used by Kaepernick on any clothing items.   It will be interesting to see if Colin uses the marks, or has filed the applications as a blocking mechanism so that he doesn’t have to defend his name in the event a third-party were to seek a registration.

Trademark practice pointers:

1) Before the USPTO approves an application that references a living individual, consent to registration must be on file.  If an entity or individual other the  Colin Kaepernick had signed the trademark application, an additional document confirming he is a living individual and he consents to his name being used as part of a trademark must be filed.  To save your client money – file that form with your application so you don’t have to respond to an office action down the road.

2) Every item in which Colin’s applications listed were found in the TEAS Plus application at the USPTO.  The filing fee for a TEAS Plus application is $275 per class as compared to the $325 filing fee for using a TEAS application.  Not only does using the TEAS Plus form save money; it also expedites the review process by the examiner.

Protecting The Brand- Trademark 101

A brand or trademark is the way one business distinguishes its products or services from other businesses’ products or services.  It might be a word, a phrase, a logo, or even a combination of any or all those things. Developing a strong trademark is key to protecting the value of the brand.

Examples of well-known trademarks include NIKE, CHANEL and COKE.  The name of your product or service doesn’t have to be famous to be protected by trademark law. But, not every name is protected as a trademark.

In selecting a trademark, resist the temptation to pick a mark that is generic or describes the goods or services. Generic names cannot be protected and it is difficult, if not impossible, to protect a mark that is descriptive.  Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.

While we may all have a box of facial tissues in our office, some of us will have Kleenex(r) brand and others may have Puffs(r) brand.  Facial tissue is an example of a generic term.

Guiding clients through the process of selecting a strong product name can be challenging.  Here’s an example we often discuss with clients to highlight the difference in a generic/weak trademark and a fanciful/strong trademark.  If you open a men’s clothing store and name it “Men’s Clothing,” you cannot secure trademark protection for the name. If you open a place to cut men’s hair and call it the “Barber Shop” you cannot have a trademark.  In both examples the name of the store is generic for the product or service sold inside. But, consider a men’s clothing store where you have barber chairs as props and a barber pole at the front door.  In that case, “Barber Shop” for a men’s clothing store is not generic or descriptive.  It might just be a very strong brand name because it does not describe the product sold in the store.

After identifying a strong brand name, the next step is a trademark search to determine if anyone else is using a similar name for the same products/services or for related items. These searches are performed at the United State Patent and Trademark Office, the Internet and other third-party search services.  Trademark law is designed as a consumer protection act, not a business owner protection act.  The key of the search is determining if this new mark might be so similar to an existing brand in the marketplace that there is a likelihood of consumer confusion as to the source of the product or service.  Likelihood of consumer confusion is the standard used to determine trademark infringement.

A trademark is protected by common law from the moment the mark is attached to a product that is sold or to a service that is provided.  While no registration is required to be protected, there are benefits to registration including presumptions of ownership and dates of first use.  A state law application can be filed as soon as the brand name is used within the state.  A newly revised Texas Trademark law grants statutory trademark protection for 5 years from the time the application is approved and may be renewed for consecutive 5 year periods.

If you believe you will use your mark in interstate commerce, that means in more than one state, you may file a federal application based upon intent to use the mark.  If you are already using your mark on a product or service in more than one state, you can file a federal application based upon use.  Once the mark is in use and proper filings are made with the USPTO, a federal registration lasts for ten years from the date of registration and may be renewed for consecutive ten year periods.  But, it’s very important to know certain maintenance filings are due between the fifth and sixth year after registration in order to keep the registration active.

Ask any business owner and they will tell you the importance of their brand name.  Helping those business owners navigate the trademark selection, search and registration process is key to protecting this asset.

Super Bowl “Clean Zones” to Protect Sponsors/Trademarks in New Orleans

The City of New Orleans will enforce “clean zones” from January 28 to February 5 to comply with NFL policies to thwart ambush marketing.

Read more about the City of New Orleans efforts.

Read more about how ambush marketing can de-value a costly sponsorship.

Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot!

Get Hot — The US Copyright Office issued a ruling in June 2012 that yoga sequences are not protected by copyright.  Studios offering “hot yoga” should now be in the clear from lawsuits brought by Yogi  Bikram Choudhury so long as the name BIKRAM is not used.

Yogi Bikram Choudhury developed the “Bikram” style of hot yoga and according to records at the US Patent and Trademark Office has been using the brand name “Bikram” since 1971 in offering his yoga classes and instructional materials.  The craze of “hot yoga” (which even as a yoga student, I do not understand), has taken the US by storm.

Choudhury, diligent about licensing his rights to the BIKRAM trademark and instructional method, sues yoga studios offering “traditional hot yoga”  even if the name BIKRAM  is not used to describe the course.  Choudhury has multiple copyright registrations for his yoga instructional videos and materials.  He is claiming a copyright in the sequence which is a  compilation of 26 poses and two breathing techniques.

Two very different results were reached in recent court cases filed by Choudhury.  In the Central District of California (Western District), Choudhury sued the  studio Yoga To The People claiming copyright infringement of the sequence.  The suit, after discovery and mediation, settled in November 2012 with the defendant agreeing not to offer “hot yoga” at his studio.  Perhaps the defendant should have stuck it out with the case a bit longer as a different result was reached in a very similar case.

Choudhury sued Evolation Yoga, LLC also alleging copyright infringement of the Bikram sequence.  In a motion for summary judgment ruling, The Central District of California held:

There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.

The Evolation Yoga case (Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012))  continues with other issues not resolved by the Motion for Summary Judgment ruling.

Read more here and here.

 

Top 10 Entertainment Law Cases/Disputes/Fun Facts of 2012

Join LA film attorney Gordon Firemark and Texas music lawyer Tamera Bennett as they highlight the top legal issues in 2012 faced by the entertainment industry.

Click here for the Entertainment Law Update Podcast.

Be Thankful: Trademarks on the Table Thanksgiving Day

Sometimes it’s so hard to separate work from home — even Thanksgiving Day is filed with trademarks and brand management.

Here are a few brands you might see:

OCEAN SPRAY w design. Date of first use 1964. Registration No. 1960131.

MACY’S THANKSGIVING DAY PARADE  Date of first use 1924. Registration No. 2206890.

PEPPERIDGE FARM Date of first use 1937.  Registration No. 0360512.

BUTTERBALL w design. Date of first use 1962.  Registration No. 1151836.

 

FOOD NETWORK Date of first use 1996. Registration No. 2771532.