For decades, Adidas America, Inc. has sold tennis shoes with an iconic three stripes.
Adidas takes one more step in protecting its brand suing World Industries Inc. for their “W” striped sneaker arguing likelihood of consumer confusion.
Adidas has incontestable federal trademark rights in the three stripe design for footwear. I was unable to locate a trademark filing for the “W” design on the World Industries, Inc. shoe.
Read more from the Chicago Tribune here.
The world of tomatoes is not all sugar and spice as San Antonio, Texas-based NatureSweet, Ltd. sues Mastronardi Produce Ltd for trademark infringement.
NatureSweet’s complaint alleges Mastroniardi’s mark Angel Sweet featuring a cherry style tomato with angel wings, is just too similar to Nature Sweet’s Cherub with design trademark – featuring a grape style tomato with wings. NatureSweet has a variety of trademark registration, including one for the winged tomato.
I also noticed yesterday, as I was enjoying my NatureSweet grape tomato, that NatureSweet claims a trademark in the product packaging.
Dallas-based copyright attorney Tamera H. Bennett is honored to speak at the Tennessee Intellectual Property Law Association (TIPLA) Conference on Friday, May 4, 2012.
Here are links to many of the Copyright Law Update topics Tamera will discuss — with a few bonus links as well.
The conference provides a full day of CLE on patent, trademark and copyright topics.
For works published or copyrighted prior to January 1, 1978, the sixth circuit court of appeals made a landmark decision holding the copyright renewal term vests in the music publisher when the author dies during the twenty-eighth year after copyright was secured — the last year of the fist copyright term.
The history of the case can be found here and here. Miller’s heirs have been in a litigation with Sony Music Publishing for years over who owns the songs that Miller wrote in 1964. Miller died in 1992, the 28th year after writing songs such as “King of the Road” and “Dang Me.”
It takes a family with assets to pursue litigation to trial, appeal and back again. The Miller estate has helped to clarify, at least in the sixth circuit, an unanswered question in copyright law.
Read the opinion here.
Twenty years after Guy Hobbs first thought Elton John’s hit “Nikiti” was lyrically too similar to Hobbs’ poem “Natasha,” Hobbs’ sued John, Bernie Taupin and Big Pig Music in federal court for copyright infringement on April 26, 2012.
Both the song and poem tell a story of a cold-war romance. Hobbs’ poem, or he calls it his lyrics, was written in 1982 and registered for copyright in the UK in 1983. In 1984 Hobbs forwarded the poem “Natasha” to Big Pig Music, the music publishing company that represents Elton John and Bernie Taupin.
Elton John released “Nikita” in 1985 on the album “Ice and Fire.” Hobbs alleges he first discovered the release of “Nikiti” in 2001.
Whether or not Hobbs can prove infringement is not the primary issue in this case. Hobbs’ has admitted in his complaint he had actual knowledge in 2001 of the alleged infringement. Further, the defendants could easily imply Hobbs should have had knowledge in 1985 when John released the album “Ice and Fire.”
The defense should succeed in this case on their defenses of statute of limitations and laches. Hobbs simply waited too long to sue. The statute of limitations for copyright infringement is three years. Laches is a defense in common law created by judges, meaning not a law created by legislators, that says you can’t wait too long to sue.
There may also be some interesting procedural questions based on the fact that all the parties are residents of countries other than the United States.
Lighting is key in museum exhibits. So important to the Nasher Sculpture Center in downtown Dallas, that early in its design, covenants were agreed to with surrounding land owners to limit how light would reflect or be directed into the museum space.
The Nasher’s new neighbor, the 42 story Museum Condo complex, is throwing a lot more light on the museum (pun intended). The reflective glass on the exterior of the condo complex is directing sunlight into the Nasher which not only changes the way Nasher displays the art from a design element, but also can damage any artwork displayed in the spaces impacted.
While the dispute has been ongoing for sometime, the two parties are acting like good neighbors in jointly retaining Dallas attorney and civic leader Tom Luce to mediate the dispute and develop a resolution to this matter.
Dig deeper into the research behind light damage and museums by clicking this link.
This Digital Distribution Aggregation flow chart provides answers to basic questions on how a record label, or artist that owns their master recordings/sound recordings, can use a digital content aggregator to make their sound recordings available on iTunes, Amazon, Spotify and other digital services.
The flow chart is not all-inclusive and is not intended to endorse any particular aggregator. There are lots of choices out there these days. The chart will give you a starting point/frame of reference.
In a much watched lawsuit, the Allman Brothers, Cheap Trick and the Youngbloods reached a settlement with the Sony record label for back payment of digital download royalties. The lawsuit has been in the forefront of the dispute between record labels and recording artists over the treatment of digital download income in respect to contracts signed back before the advent of iTunes and mp3 files.
This case was certified as a class action, so potentially the settlement terms could impact recording artists that had deals with Sony (or a predecessor) between 1976 and 2001.
Sony is not alone in facing litigation from artists that signed deals prior 2003 for the license vs sale issue. The “Eminem Case” of F.B.T. Productions, LLC v. Aftermath Records was the pioneer case in which the Ninth Circuit held a digital download should be treated as a license, entitling an artist to a 50% royalty.
Click here for a running list of lawsuits over the sale vs license issue for digital downloads.
As promised, here is a running list of lawsuits filed against record labels over the license vs sale royalty issue for digital downloads. Please be patient as we gather details on cases. We may have a case name listed while we are in the process of tracking down the citation.
(The Temptations) Otis Williams and Ron Tyson v UMG Recordings Inc., 3:2012cv01289, filed March 15, 2012, NDCA.
Allman Brothers v. Sony BMG Music Entertainment, 1:2006cv03252, filed April 27, 2006, SDNY. As of 3/9/2012 The Court has preliminarily approved the Stipulation and the Settlement set forth, as being a fair, reasonable and adequate settlement as to all Class Members. A settlement in principal was reached a year earlier in March 2011.
Graciela Beltran v EMI Music, Inc., 4:2012cv01002, Feb. 28, 2012, NDCA.
Toto, Inc. v Sony Music Entertainment,1:2012cv01434, filed Feb. 27, 2012, SDNY.
Gary Wright v. Warner Music Group, 4:2012cv00870, filed Feb. 22, 2012, NDCA.
Kenny Rogers v. Capitol Records, 3:2012cv00180, filed Feb. 13, 2012, MDTN.
(Sister) Sledge v. Warner Music Group Corp., 3:2012cv00559, filed Feb. 2, 2012, NDCA.
Felice Catena (Bruce Gary Estate /Knack) v. Capitol Records, LLC, 2:2012cv00806, filed Jan. 30, 2012.
Peter Frampton v. A and M Records Inc and UMG Recordings Inc., 2:2011cv10649, filed Dec. 23, 2011, CDCA.
Carlton Douglas Ridenhour (Chuck D of Public Enemy) v. UMG Recordings, Inc., 3:2011cv05321, filed November 2, 2011, NDCA.
Rob Zombie v UMG Recordings, Inc., 4:2011cv02431, filed May 18, 2011, NDCA.
Rick James Estate v. UMG Recordings, Inc., 3:2011cv01613, filed April 1, 2011, NDCA.
F.B.T. Productions, LLC v Aftermath Records, 621 F.3d 958 (9th Cir. 2010) cert denied. Holding digital downloads are a license not a sale.
George Clinton v UMG Recordings, Inc., 2:2007cv00672, filed Jan. 29, 2007, CDCA.
Grammy nominee Drake has been sued by an ex-girlfriend who claims she co-wrote the hit song “Marvin’s Room” and is entitled to part ownership in the copyright in the song; copyright in the sound recording; and payment of songwriter royalties.
The first 30 seconds of the song is a recording of a phone conversation with the ex-girlfriend and plaintiff, Erika Lee. Lee asserts that she and Drake had every intention to write the song together and that her contributions were intended to be incorporated into the final song. Lee contends the intro “phone message” is key to the underlying song.
Lee’s complaint is somewhat confusing as issues of ownership of the sound recording are intermingled with claims asserting ownership in the underlying song.
The most interesting thing in the complaint to me is a cause of action for Breach of Fiduciary Duty. Really, songwriters have a fiduciary duty to one another? If a record label doesn’t have a fiduciary duty to an artist, do we really think that one songwriter would owe the highest duty of utmost care to a co-writer?
Read the complaint here.
Newt Gingrich’s campaign makes the news twice in a week for claims of copyright infringement of a song. Rude Music Inc., owned by Frank Sullivan, a co-author of the song “Eye of the Tiger,” filed a copyright infringement lawsuit in federal district court in Chicago for Gingrich’s use of the song on the campaign trail.
As discussed last week, so long as Gingrich’s campaign secured the necessary public performance licenses, any song may be played at a campaign event without permission from Rude Music, Frank Sullivan or Rocky Balboa.
Rude Music complaint’s does raise an interesting point regarding videos of campaign events where “Eye of the Tiger” can be heard. There may be a blush of a valid claim for copyright infringement related to these videos. Reproduction and distribution of the video footage looks a lot less like a “public performance” and more like a synchronization of the song to the other visual images in the footage.
Volcano Records (parent company is Sony), the copyright owner of the underlying sound recording, is not a party to the lawsuit.
Happy reading: Jump to the complaint.
Here we go again…. One of my favorite topics is the use of songs and sound recordings in campaigns. Especially presidential campaigns. According to news reports, Third Side Music sent Gringrich’s campaign a cease and desist letter ordering them to stop using the song “How You Like Me Now” at campaign events.
In 2008 I blogged here and here stating so long as a campaign secures the necessary public performance license, a song can be played at campaign events without any permission from the artist, songwriter or music publisher. If Mr. Gingrich would like to incorporate the song into a video or advertisement, then his team would need to secure a master use license from the record label and a synchronization license from the music publisher.
Third Side Music is the Canadian music publisher that controls the rights to the song. The public performance rights for the song “How You Like Me Know” are most likely administered by SOCAN.
Thank you to Canadian entertainment attorney Bob Tarantino for linking to this post and distinguishing the “moral rights” that arise under UK and Canadian Copyright Law. Good stuff!
This week the “Ron Paul 2012 Presidential Committee, Inc. filed a lawsuit claiming defamation of Rep. Ron Paul’s character and unauthorized use of the trademark rights in his name in a political video.
The video, released by Paul advocates and not approved or authorized by Paul, makes personal attacks against fellow Republican presidential nominee Jon Huntsman. With Hunstman dropping out of the race, it’s unlikely Paul’s camp will pursue this litigation much further against defendants they have so far been unable to identify.
The U.S. Supreme Court decision released this week in Golan v Holder maintained copyright protection for millions of works created by foreign authors. Before 1989, many foreign authors’ works became public domain for not fulfilling requirements in the U.S. Copyright Act. In 1994, Congress passed the Uruguay Round Agreements Act restoring U.S. copyright protection for works published by foreign authors primarily between 1923 and 1964. The URAA brought the U.S. into compliance with the Berne Convention copyright treaty.
The Justices that dissented in the 6 to 2 decision expressed concern that upholding the pertinent section of the URAA denies the right of freedom expression and curtails the incentive to create new works.
Read more from the SCOTUS Blog.
Read more from The New York Times.
Read more from BMI quoting music lawyer Tamera Bennett.
Take a listen to the latest edition of the Entertainment Law Update Podcast with co-hosts L.A. film lawyer Gordon Firemark and Texas-based music lawyer Tamera Bennett.
I would like to give a personal shout-out and thank you to Gordon for bringing me on board for this great podcast. I am looking forward to an amazing 2012 for the podcast and can’t wait to see who might be making a surprise visit as guest co-host!
When a famous person dies, the survival of the right to control and profit from their name and likeness depends on when they died and what state they lived in at their death. Famous artists may need to take a closer look at where they call home during their life to insure their right of publicity has a home post-death.
After losing a battle in 2005 to have Jimi Hendrix’s right of publicity protected by New York state law, where Hendrix lived at his death, Hendrix’s heirs worked to amend the Washington state right of publicity law. Hendrix’s heirs sued under the newly amended law. In 2011 a trial judge held Washington’s Personality Rights Act, that allowed anyone to sue in Washington to enforce their rights regardless of where the lived when they died, was unconstitutional. The trial court’s decision has been appealed to the Ninth Circuit.
This year an Indiana court ruled that Indiana’s post-death right of publicity law cannot be applied retroactively. The court ruled John Dillenger’s heirs have no claim to Dillenger’s name and likeness because Dillenger died before Indiana had a posthumous right of publicity.
A California district judge’s decision ruling Marilyn Monroe was a resident of New York at her death is on appeal to the Ninth Circuit. If upheld, Monroe’s post-death right of publicity would not be protected by changes to the California right of publicity statute which granted retroactive protection to famous California residents who died before 1985. See Milton H. Greene Archives, Inc v. Marilyn Monroe LLC, 08-56471 (9th Cir. filed 2008).
This article is was originally published in Billboard Magazine and has been reprinted with permission.
George Clinton v. Universal Music Group Highlights Time Limits On Royalty Claims, BILLBOARD, Sept. 29, 2011.
by Tamera H. Bennett
Judging from pioneering funk productions helmed by Parliament-Funkadelic mastermind George Clinton, the man knows the value of staying on the beat and keeping time.
But the apparent failure of Clinton to keep an eye on the clock could cost him dearly in terms of royalties he claims he’s still owed. The decision highlights one of the challenges facing heritage artists and their heirs in navigating claims for underpayment of digital downloads and possibly other new media uses of their copyrights. In addition to keeping track of royalties due to them (which can require costly audits), artists must also be aware of how long they have to raise objections to the size of the payments they receive.
In 1980, Clinton signed a production agreement with Casablanca Records, which is now owned by Universal Music Group. UMG claims that it couldn’t reach Clinton for years and that it was unable to send him royalty statements. Once Clinton re-surfaced in 2001, UMG sent back royalty statements and payments to Clinton for the years 1996 to 2000.
But Clinton sued UMG in 2007 for breach of contract, claiming that the label group didn’t pay him all the royalties he was due from 2000 to 2003. His production contract required Clinton to provide detailed and specific objections to his royalty statements and he complied — almost. Clinton outlined under-payments, non-payments and improper withholding of taxes. What Clinton never specified was that he had been underpaid for royalties stemming from digital downloads.
Then earlier this year, Clinton amended his lawsuit claiming for the first time that UMG had not paid him the correct royalty rate for digital downloads, citing a 2010 decision by the U.S. Court of Appeals for the Ninth Circuit in F.B.T. Productions, LLC v. Aftermath Records. In the F.B.T. case, the court held that in certain contractual situations digital downloads are a license and as such the record label must pay a higher royalty rate to the artist.
Clinton had the right under his production agreement to review and audit royalty statements to determine if UMG had properly paid him. Clinton also had the right to sue UMG if it failed to do so.
But both of these rights had a time limit — three years after the date a royalty statement was “rendered” to Clinton. It is very common in recording agreements for there to be a time limit on bringing a lawsuit, a period of time which is usually shorter than the statute of limitations stipulated in state or federal law.
Three years seems like a pretty easy way to calculate a deadline. Indeed, in 2003, Clinton and UMG agreed to a “tolling” agreement that effectively froze time so the three-year window within which Clinton had to file a lawsuit for the statements rendered in 2000 and later would not run out.
But on Aug. 9, U.S. District Court Judge Philip S. Gutierrez ruled that the clock had started running three years from the time Clinton should have received his royalty statement. If Clinton didn’t receive his royalty statement, his 1980 contract placed the responsibility on Clinton to tell UMG in writing that he never got his statement. Clinton’s four-year absence cost him the ability to sue UMG for potential accounting errors over multiple years.
In his ruling, Gutierrez made it clear that Clinton failed to specifically object to the underpayment of digital download royalties in a timely manner. Because Clinton didn’t comply with the requirements in his recording contract, he lost the opportunity to challenge UMG on years of royalty statements specifically related to digital downloads.
At the end of October, Gutierrez will determine whether Clinton v UMG will go to trial on the question of whether the tolling agreement was valid. The district judge ruled that it wasn’t valid, but an appeals court reviewed the decision and sent the question back to Gutierrez.
If the tolling agreement is valid — that is, if Clinton’s suit against UMG is deemed to have been filed within the required time frame, then Gutierrez will rule on Clinton’s claims that UMG failed to pay him royalties due to him, excluding those for digital downloads. This is a significant concern for any label or artist. Even though there is no binding court decision in Clinton v. UMG on this issue, it has become imperative to include language that references the freezing of all statutory limitations periods as well as contractual limitations periods.
The possibility that the tolling agreement could be declared invalid has prompted Clinton to sue his now-former lawyers for legal malpractice.
Tamera H. Bennett is an entertainment and intellectual property attorney based in Lewisville, Texas.
Music in presidential campaigns has been a hot topic in the US as well as in France. Now we have the the campaign for Nicaraguan President Daniel Ortega entering the scene.
News reports say Ortega’s campaign is using a Spanish language version of the classic song “Stand By Me” in political ads. Sony/ATV, the copyright owner of the song, forwarded a ceases and desist letter to Ortega. I am assuming Sony/ATV is asserting no synchronization license was granted to use the song.
Read more about John McCain’s, Sarah Palin’s, Chuck Devore’s, and Nicolas Sarkozy‘s legal disputes over use of music related to a political campaign.
Effective September 1, 2011, the Texas Legislature repealed Texas Occupations Code, Chapter 2105, and removed registration requirements for, and the authority to regulate talent agencies.
The supporters of repealing the code section made the following comments in legislative hearings:
It is inefficient and unnecessary to continue the state licensing of talent agencies ….. The number of licensees … is so small that there is no benefit to the consumer to continue regulation by TDLR. The Deceptive Trade Practices Act would provide sufficient protections to consumers who could be harmed ….
Talent agencies originally were regulated to protect actors from fraudulent agents. However, there is widespread activity by unregulated parties that offer similar services, and the regulations are easily circumvented, rendering them ineffective.
Those that wished to keep the regulation in place stated:
Regulation of talent agencies originally was enacted to ensure that actors were not swindled by talent agents who would take money in exchange for future services and then disappear and also to protect legitimate talent agencies. If there is widespread activity by unregulated parties, the bill should address better regulation, instead of removing it completely.
The Texas Talent Agencies Act only regulated securing business for models and actors. It did not regulate the securing of gigs for musicians.
Did you know that US Copyright Law and British Copyright Law do not grant copyright protection to works that “are not originated by humans?” Hum,
what does that really mean? It might just mean that the photographs taken by a clever macaque monkey after it commandeered the human photographer’s camera are in the public domain.
This post from Tech Dirt raises the issue of copyright ownership in the photos and raised the fur of the Carter’s News Agency who claim they now control the images. The comments to the Tech Dirt post, and the serious (sometimes seriously funny) comments of Gordon Firemark and Tamera Bennett in Episode 23 of the Entertainment Law Podcast provide some food for thought on this issue.
JDSUPRA Entertainment Copyright Trademark
