Current Trends in Copyright, Trademark & Entertainment Law

by: Tamera H. Bennett
May 2, 2008

This is NOT our client.

From the Fort Worth Star Telegram:

Charles Ray Fuller must have been planning one big record company.

The 21-year-old North Texas man was arrested last week for trying to cash a $360 billion check, saying he wanted to start a record business, authorities said. Tellers at the Fort Worth bank were immediately suspicious - perhaps the 10 zeros on a personal check tipped them off, according to investigators.

by Tamera H. Bennett
April 30, 2008

The documentary Expelled (see my post earlier) released on April 18, 2008 had and still has some legal wrangling regarding content.

Four days before the theatrical release, the producers of the film filed a declaratory judgment action in the Northern District of Texas after receiving a demand letter from XVIVO, LLC claiming certain animation in the film infringed XVIVO’s copyright.

A week after the film’s release Yoko Ono, John Lennon’s sons and EMI Blackwood Music, Inc. (publishing administrator) sued Premise Media Corporation, LP for copyright infringement for use of the lyrics to “Imagine.”

The complaint states: …The Film prominently featured the use of John Lennon’s recording of [Imagine] together with reproduction, by subtitle, of a portion of the lyrics of [Imagine] on the screen.

The wording in the complaint at first leads you to believe the plaintiff’s are asserting a claim for copyright infringement of the master recording, along with copyright infringement for the use of the song. But, the master issue is not raised again.

Also of interest is a claim for Lanham Act violations of 1125(a). The complaint reads: The name “Imagine” is distinctive and arbitrary and has acquired secondary meaning. “Imagine” is entitled to protection from misappropriation and from use on unauthorized goods and products.

Premise’s answer is not yet due, but the press release from Premise and a review of other reports, show Premise is claiming the use of 10 words from the lyrics of “Imagine” are for commentary purposes and fall within the defense of fair use under the copyright act.

On a footnote…. the copyright nerd in me thought it was pretty cool to see the copyright registration filed for “Imagine” which was attached to the Ono Lennon complaint.

Premise Media Corporation, LP v XVIVO, LLC
Northern District of Texas
April 14, 2008
3-08CV0639-D

Ono Lennon v. Premise Media Corporation
Southern District of New York
April 24, 2008
08-CV-3813

By Tamera H. Bennett

From Texas Wesleyan University School of Law, my alma mater:

My name is Zach Burt and I am currently a second-year student at Texas Wesleyan School of Law. Recently, I was elected to serve as the Symposium Editor of the Texas Wesleyan Law Review for the upcoming academic year of 2008-2009. I am writing this email because I want to inform you of an exciting symposium that the Wesleyan Law Review will be hosting this Fall. This symposium will be held at Texas Wesleyan School of Law on Friday, October 10, 2008. The topic of the symposium is Intellectual Property and Indigenous Peoples and its purpose is to examine intellectual property concepts - copyrights, trademark rights, patent rights, and trade secrets - as applied to the cultural heritage, art, and artifact of indigenous peoples. The Law Review is currently accepting proposals for presentations and papers on subjects related to the conjunction (or disjunction) of intellectual property law and policy with the interests of indigenous peoples. We anticipate the dialogue to represent a variety of perspectives, and include both academics and practitioners. Accepted papers will be published in Texas Wesleyan Law Review.

I want to personally extend an invitation to each of you to participate in this symposium and submit an article on this topic if you so desire. I also want to solicit your help to reach out to practitioners and academics who you feel would be interested in writing a paper and participating in a symposium on this topic. If you are an interested author or speaker, or if you know of anyone who would be an interested author or speaker, please submit an abstract of fewer than 300 words to jzachburt at gmail.com by May 30, 2008.

If you have any questions or comments, or you need any additional information, please feel free to contact me any time at jzachburt at gmail.com. Questions and requests for further information can also be directed to Megan Carpenter, Associate Professor of Law in Intellectual Property, at mcarpenter at law.txwes.edu.

Sincerely,
Zach Burt
Symposium Editor
Texas Wesleyan Law Review

By: Tamera H. Bennett and Stephanie A. Prince

Below is a summary of some of the copyright cases filed in the Northern District of Texas during the first quarter of 2008.
Northern District
Arcadia(MSI) v. Univision Communications, Inc. (4:08cv023y) Arcadia, an Austrian company engaged in the business of publishing and distributing musical works along with Premier Tracks, Arcadia’s subpublisher in the United States, filed suit against Univision on January 16, 2008 for the use, performance, publication, and exploitation of several of Arcadia’s licensed musical works in and for a television series.

Arcadia seeks injunctive relief, an order requiring Defendants to impound and destroy all copies of the television series, and damages.

Great Notions, Inc. v. Brown (8:08cv0092k)
Great Notions, a Texas and Illinois corporation filed suit on January 22, 2008 against Carol Brown for the copy, reproduction, duplication, trade, dissemination, and sale of some of Great Notions’ “Amazing Designs” copyrighted art and character embroidery designs over the internet.

Great Notions seeks injunctive relief, punitive damages, exemplary damages, and attorneys’ fees.

Michael Massingill v. Stream Energy Ltd. (8:08cv0091m)
Massingill, one of two co-authors and owners of all right, title, and interest in and to the copyrights in the Arsenal CIS software, filed suit on January 22, 2008 against Stream Energy, Ltd and others for the knowing and willful direct copying of Plaintiff’s Arsenal Software for the maintenance of its business. Massingill further alleges that while Stream Energy has not recorded a single dollar’s worth of sales of energy without using Arsenal Software, Stream Energy has wholly refused to pay any license fees for the software.

Massingill seeks injunctive relief, damages, and attorneys’ fees.

Reinfield Music Publishing, Inc. v. I Gotcha, Inc. (4:08cv193y)
Reinfield Music Publishing, Inc. and others filed suit on March 20, 2008 against I Gotcha, Inc. and Waldrow W. Duncan for copyright infringement based on Defendants’ public performances of copyrighted musical works. I Gotcha, Inc. is a Texas corporation that controls, manages, operates, and maintains Main Stage, a bar in Fort Worth, Texas. Among the copyrighted musical works at issue are: “Before He Cheats,” “Hells Bells,” and “Runnin’ With The Devil.”

Plaintiffs seek injunctive relief, damages, and attorneys’ fees.

Gouldd v. Accetta (3:08cv04970)
Bill Gouldd filed suit on March 21, 2008 against Marc Accetta and others for copyright infringement by illegal and unauthorized copying, sale, distribution, and performance of Gouldd’s copyrighted works as well as the illegal and unauthorized creation and performance of derivative works, breach of contract, interference with business relations, and misappropriation and wrongful use of trade secrets.

The complaint alleges that Gouldd is the creator and sole copyright owner of collections of audio recordings based on Gouldd’s original performances, referred to as the “Character Stories.” These “Character Stories” include such pieces as: “The Doctor,” the “High Plains Drifter,” “The Fisherman,” “The Construction Worker,” “The Farmer,” “The Professor,” “The G.I.,” “The Golfer,” “The Karate Master,” “The Prisoner,” “The Prospector,” “The Hockey Player,” “The Joker,” “The Mechanic,” and “The Indian Chief.”

The complaint further alleges that the Defendants are engaged in the manufacture, distribution, and sale of written materials, audio recordings, and live lectures and performances in the field of motivation and life coaching, private consulting services, and related products and services in the field of motivation and life coaching. The complaint goes on to allege that Defendants infringement includes making or having made and placed on the market, written materials, audio and video recordings of copies and/or derivative works of Gouldd’s copyrighted works, and that Defendant Accetta, encouraged by the other Defendants, interfered with Gouldd’s business relations by breaching an agreement with Advanced Marketing Seminars, Inc., and misappropriating Gouldd’s trade secrets that had been licensed to Advanced Marketing Seminars, Inc.

Gouldd seeks injunctive relief, damages, and attorneys’ fees.

CHM Industries v. Structural & Steel Products, Inc. (8:08cv0217p)
Plaintiff CHM creates high mast lighting applications for use in the commercial transportation, and sporting sectors.

CHM maintains a series of copyrighted scaled and unscaled drawings depicting its high mast lighting applications. CHM filed suit on February 7, 2008 against Structural Steel Products, Inc. and others for the illegal publication and other use of CHM’s copyrighted works, as well as for the misappropriation and unlawful use of CHM’s trade secrets, misappropriation of CHM’s effort, conversion of CHM’s property, common law and statutory theft of trade secrets, harmful access by computer, breach of fiduciary duty, knowingly participating in fiduciary breach, breach of contract, tortuous interference with CHM’s contractual and/or prospective business relationships, and conspiracy. CHM alleges that Steel Structural Products, Inc. maintained access to CHM’s trade secrets and other property through employees who were former CHM employees.

CHM seeks injunctive relief, economic damages, exemplary damages, and attorneys’ fees.

College Entrance Examination Board v. Karen Dillard College Prep, LP (3:08cv0034)
The College Board filed suit on February 20, 2008 against Karen Dillard for copyright and trademark infringement. The College Board alleges that Karen Dillard copied and distributed, among other documents, a test form from a live SAT form used by the College Board. To add insult to injury, the College Board further alleges that Karen Dillard named this test form “PVA,” meaning “Pirated Version.”

The College Board seeks injunctive relief, damages, and attorneys’ fees.

Arista Records LLC v. DOES 1 – 16 (4:2008cv00132) The record labels are busy with copyright infringement claims for unauthorized downloading and distribution of music in the Northern District of Texas.

by Tamera H. Bennett
April 23, 2008

Forty-seven years ago Thomas Kenneth Abraham d/b/a Paddle Tramps started selling keepsakes to sororities and fraternities, featuring Greek letters and house insignia. Now the Greeks are saying stop it.

A lawsuit in Southern Florida, naming Abraham as one of seven defendants, was dismissed April 1, 2008 because of lack of venue. There is a great article on LAW.COM with background on this case.

But, the saga continues … Abraham filed a declaratory judgment action in the Northern District of Texas on April 3, 2008 against 67 defendants. Who knew there were that many Greek organizations? Cut the number in half because the sorority/fraternity was sued as an unincorporated association along with the corporate organization for each sorority/fraternity.

Abraham seeks a declaration from the court on non-infringement on several grounds, but I think this may be his best argument:

Plaintiff [Abraham/Paddle Tramps] further requests a declaratory judgment from this Court that the Defendants’ failure to control the use of their alleged marks for decades by Paddle Tramps and others not only negates any likelihood of confusion, but this conduct along with other action or inaction by Defendants bars any claims against Paddle Tramps for infringement.

Abraham is represented by Dallas attorney Molly Richard.

Abraham v. Alpha Chi Omega et al
Assigned to: Judge Reed C O’Connor
Cause: 28:2201 Declaratory Judgment
Filed April 1, 2008
Northern District of Texas, Dallas

by Tamera H. Bennett
April 23, 2008

The folks over at Seton Hall Law Review requested I pass along the following information:

Journal of Sports and Entertainment Law
Call for Submissions!

The Seton Hall School of Law Journal of Sports & Entertainment Law is seeking submissions for possible publication in future issues. If you are a law professor, other type of professor, practicing attorney, judicial clerk, law student, or graduate student who has written a substantive piece that pertains to sports or entertainment law, please consider submitting your work.

For more information or to submit a piece, please e-mail Tara Touloumis, Articles Editor, ttouloumis at gmail.com. Thank you!

by Tamera H. Bennett

Congratulations to our friend and colleague Melody Wilkinson on winning the run-off election for the republican nominee for judge of the Tarrant County, Texas 17th Judicial District.

It was a close one. Twenty votes made the difference.

by: Tamera H. Bennett

Testimony began today in Britain to enforce a 2006 California court judgment against a British prop designer held liable for copyright and trademark infringement of the Star Wars’ “Storm Trooper” design.

Andrew Ainsworth, sculpted the Stormtrooper helmet for the first “Star Wars” movie in 1977. Ainsworth now sells replicas of the helmets and armor “casted from the original molds.”

Lucasfilms won a $20 million judgment in 2006. Now that they are enforcing the judgment, Ainsworth is countersuing claim he owns the copyright and is entitled to a portion of the $24 Billion in “Star Wars” merchandising revenue.

May the Force be with you in all your litigation.

by Tamera H. Bennett and Katherine Stimson
April 4, 2008

Deutsche Telekom, better known as T-Mobile in the U.S., sent a cease and desist letter this week to technology blog ENGADGET MOBILE demanding it ceases using the color magenta on its website.

Deutsche Telekom holds hundreds of trademark registrations for everything from clothing and beer to financial services, insurance, and cell phone communications. Some of Deutsche Telekom’s applications claim the color magenta as part of the trademark.

Read more at WIRED.

Here is ENGADGET’S view.

by Tamera H. Bennett
April 3, 2008

I enjoyed listening to this NPR news story last week regarding colleges, namely Auburn and Alabama, who do not own the copyright to their fight song.

It was a great opportunity to explain to my 8 year-old what Mom does for a living when it comes to licensing songs. His reply to the idea that Auburn does not make any money from their fight song … “they should become a vicious mob and get their money.”

By Tamera H. Bennett
March 12, 2008

If you can’t be rock star, be a Rock Star Attorney. That’s my motto. My plan, beginning Thursday, is to bring daily updates on hot legal and business topics addressed at the SXSW Music conference.

The Rock Star attorney shirt above is offered by the Entertainment & Sports Law Section of the State Bar of Texas. Send me an email if you are interested in purchasing.

by Tamera H. Bennett
March 10, 2008

I am starting a post on asking permission with the following statement: The IP ADR Blog has a great idea in which they are working through the alphabet for post topics. Do I need permission from them to use this same idea? I think not. Ideas may be protected by patent law and may also be protected under certain contract theories. Using the alphabet to organize a topic is not original to the blog in question; just read a children’s book. So this idea is not protectable, but the expression may very well be protected. What if I copied the blog post written by someone else, would I need permission then?

I may not have asked permission for the A, B, C’s, but I did ask permission to copy the blog post in its entirety below. Why? The blog post itself is protected by copyright. The post is in reference to “ways to avoid a claim of copyright infringement.”

The Easiest Way to Get What You Want: Say Please
Posted on February 28, 2008 by Victoria Pynchon

Recently I re-posted Five Ways to Minimize Risk of Copyright Liability from Citizen Media here.

Today, IP attorney extraordinaire Tamera Bennett (left) dropped by to remind us of our own ADR “core values,” i.e., self-determination and respect for the rights of others.

Instead of simply approving Tamera’s comment, I decided to bring it up here for everyone to see.

The easiest way to get along with our fellow artists?

Get a license!

If you have genuine affection for the work of another, drop them a line, pick up a phone, send a carrier pigeon.

“I really love your work.”

Then ask for permission to use it.

Just do what your mother taught you. Ask nicely. Say please. Then thank the nice copyright owner for being so generous with his/her work. You’d be amazed at people’s generosity, especially when you couple it with a (true) statement such as “I’m a young artist and don’t have a lot of money but would really like to . . . . . ”

If you can’t say that, i.e., if you have the money to pay the license fee, for heaven’s sake support your fellow artists.

Tamera’s comment below. See her blog, Current Trends in Copyright, Trademark and Entertainment Law here.

I have several concerns with the listing of ways to avoid copyright infringement.

1. “Use only as much of the copyrighted work as is necessary to accomplish your purpose or convey your message” —- Clients come to me and want to know how much of the song can I use or can I reprint a portion of this chapter of the book, or can I use this poster in something else. I advise the client to get a license. Fair Use is a defense which is very difficult to win. There is no cut-and-dry rule that you can use three bars from the song before liability attaches.

2. Add something new or beneficial (don’t just copy it — improve it!) — This trips folks up all the time. Adding something new does not protect you from copyright infringement. You need a license to create a derivative work. Adding something new to someone else’s copyright is a violation of the copyright owner’s exclusive right to allow for the creation of derivative works.

Remember, if you did not create it, you probably need a license to use it.

Tamera H. Bennett
February 29, 2008

Clearly Maybelline cosmetics has signed on as a BIG advertiser for the new hit show Lipstick Jungle. I have been waiting for an actual product placement to occur in the program. Last night you had to be listening close to here the reference to an upcoming Maybelline photo shoot.

This was built into the scene where Mike tips his hand to Nicco regarding his knowledge of Kirby.

Also, Counterfeit Chic was wondering when charactor Victory Ford would discover the theft of her fashion designs ….. tune in next week to see if there are any exciting legal battles regarding this issue on the show.

by Tamera H. Bennett
February 27, 2008

I had a wonderful opportunity last week to see a producer’s cut viewing of the documentary Ben Stein Expelled No Intelligence Allowed.

No matter your personal belief, I encourage you to attend the film when it opens in April to see Ben Stein’s scientific journey through the theories of intelligent design and Darwinism.

by Tamera H. Bennett
February 26, 2008

Thanks to Counterfeit Chic for this update on the pending Design Piracy Prohibition Act.

by Tamera H. Bennett
February 26, 2007

Thanks to attorney Catherine Hough for this interesting link on how iTunes has overtaken Amazon as the second largest retailer of music. Not just downloads, but physical CD sells, too.

by Tamera H. Bennett
January 31, 2008

We have fact patterns come through the door frequently where a partnership or other business relationship has gone south and suddenly one partner is claiming co-ownership or co-authorship of copyrighted works by virtue of the business relationship of the parties.

In Gordon v. Allen, 2008 U.S. App. LEXIS 66 (5th Cir. 2008), a similar fact pattern arose with the subject matter of the copyrights relating to the assassination of JFK.

A state court dispute between business associates in 1999 found that a partnership existed between the plaintiff and defendant in this current case. The Plaintiff had created certain copyright protected works. In the state court case Defendant converted existing physical copies of the work and was selling the works. There was no action for copyright infringement. The state court found for Allen, the defendant.

In 2002, Plaintiff discovered Defendant selling the same works without his permission and also derivative works. Plaintiff brought a suit for copyright infringement.

Defendant filed a motion of summary judgment on numerous grounds. The most interesting ground to me was the following:

Third, [Defendant] asserts that the district court erred in denying her motion for judgment as a matter of law (”JMOL”) at the close of [Plaintiff's] evidence. In her motion, [Defendant] argued that she had conclusively established copyright ownership in a partnership between herself and [Plaintiff] and therefore, she could not have infringed on any copyrights by reproducing and selling the works.

[Defendant] contends that the district court erred in denying her motions because: (1) by virtue of a 1999 state court judgment, the copyrights to The Killing of a President–Dealey Plaza Memorial Edition (1997), The Killing of a President–Dealey Plaza Memorial Edition (1998), The Killing of a President–a video magazine, and The Dealey Plaza Guidebook vested in her as a co-author because the implied partnership was the author of the works, and (2) the copyrights to The Killing of a President: The Complete Photographic Record of the JFK Assassination, the Conspiracy, and the Cover-Up; The Search for Lee Harvey Oswald; High Treason; JFK: The Case for Conspiracy; and the Assassination Films were transferred to her by operation of law. See 17 U.S.C. § 201(d)(1). [Defendant] claims that the state court judgment conclusively effected a transfer of the copyrights by operation of law to the partnership, and implicitly, to her as a partner. We disagree. The state court judgment (which set out the jury’s findings) stated:

Did Jackie Diane Allen and Robert Groden agree in 1997 to contribute their respective money, effects, labor and skills to New Frontier Publications with the understanding they would thereafter equally share its profits, losses and assets between them?

Answer: Yes

That interrogatory establishes neither co-authorship under 17 U.S.C. § 101 nor a transfer by operation of law under 17 U.S.C. § 201(d)(1). Consequently, the district court did not abuse its discretion by denying Allen’s motion for a new trial.

My take away from this unpublished opinion is that existence of a partnership or of a formal business entity such as a corporation or LLC alone is not enough to establish that the entity owns the copyrights. Of course, there may be other issues that come into play involving employees and work for hire. Those issues were not part of this case, and many times are not part of the case of disgruntled partners.

You can review the case for free at lexisone. You will need to create an account.

by Tamera H. Bennett
January 31, 2008

Interesting post by Professor Patry regarding the unauthorized publication of jokes written by the likes of Jay Leno and Rita Rudner.

“Funny” how the reality of protecting jokes plays out in fiction… read my previous post regarding an episode of Studio 6o.

by Tamera H. Bennett
January 30, 2008

Congratulations to our client Kyle Shaffer for this great article describing his record label’s first release from Peruvian flute artist Dr. Fernando Siles.

by Tamera H. Bennett
January 29, 2008

If you are interested in the legal issues surrounding “gaming,” visit attorney Mark Methenitis’ blog Law of the Game.