Entertainment Law Update Podcast: Faulkner, Einstein and Superman

Join music lawyer and music mediator Tamera Bennett and film/tv/theatre lawyer Gordon Firemark for Episode 36 of the Entertainment Law Update Podcast.  It’s the podcast by entertainment lawyers for entertainment lawyers.

 

Copyright First Sale Doctrine Before Supreme Court

The US Supreme Court will decide in Kirtsaeng v. John Wiley & Sons, Inc.  if importing and re-selling copyrighted works originally intended only for sale in a  foreign territory is protected by the “First Sale Doctrine” or constitutes copyright infringement.

If the importation of what are deemed “gray market goods” and their resale  is protected by the “First Sale Doctrine,” book publishers, music owners, and other content owners argue the economic impact on the US market will be devastating. It will under-cut content owners’ ability to offer content for different price points in foreign countries, ie, books/music/films might be sold for a cheaper price in a foreign country than in the US.

Supap Kirtsaeng, a Thai national and former Cornell University student, had family members purchase authorized copies of textbooks in Thailand which he resold on eBay in the US for a profit. Evidence at trial suggests Kirtsaeng had a million dollar operation.  John Wiley & Sons, Inc. sued Kirtsaeng for copyright infringement and won at trial and the Second Court of Appeals upheld a $600,000 damage award.

Kirtsaeng argues his actions were not copyright infringement but protected by the first sale doctrine which provides an individual who knowingly purchases a copy of a copyrighted work from the copyright holder receives the right to sell, display or otherwise dispose of that particular copy.   See 17 U.S.C. § 109(a) & (c).

John Wiley & Sons argues unauthorized importation of the books constitutes copyright infringement in violation of the copyright owners’ distribution rights.  See 17 U.S.C.§ 602(a)(1).  Content owners argue such “gray market” goods or unauthorized imports are not lawfully made under the Copyright Act and the resale constitutes copyright infringement.

The case is ripe for Supreme Court review as the 2nd and 9th Circuits say the “first sale doctrine” does not apply and the 3rd Circuit says it does.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discussed the Kirtsaeng appellate court ruling on Episode 23 of the Entertainment Law Update podcast.

Newt Gingrich Sued Copyright Infringement “Eye of the Tiger”

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.

Entertainment Law Update Podcast 26: Zombies, Crowds, & Trees

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!

Y.M.C.A. — Spells Copyright Termination

Victor Willis, the former lead singer of the group The Village People and the songwriter or co-writer on 32 songs performed by the group, is in a legal battle with the music publishers that currently own the copyright in the songs  to terminate the agreements granting ownership of the song copyrights to the music publisher.

Pursuant to section 203 of the 1976 Copyright Act authors (or certain heirs) may terminate  copyright assignments and reclaim copyrights 35 years after the work is first published.  There are strict statutory guidelines that must be followed and they are outlined in more detail in the article here.

The music publishers that own the songs made famous by The Village People have asked a judge to find the songs were created by Willis as “works for hire.”  Under the Copyright Act works created as “works for hire” are not subject to the termination provision because the employer, in this case the music publisher, would by law be deemed the author of the work.  But, songs are not specifically enumerated as a category of “works for hire,” so the music publishers would be required to prove that Willis was their employee in order for this argument to fly.

While the article from The Hollywood Reporter Esq. blog and The New York Times lay out the facts and the basics on termination law, they do not mention what might be the music publisher’s best argument to defeat the claim:  17 USC § 203(A)(1) requires that when a work, in this fact pattern a song, has more than one author, a termination of the grant may be effected by a majority of the authors who executed the original agreement conveying the rights to the copyright.  “Y.M.C.A” has four songwriters.  Three of the four songwriters must properly serve notice on the music publisher to meet the first hurdle in even attempting to terminate the grant. While the other co-writers may have filed their termination notices, this fact does not seem to be surfacing in the news reports.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discuss this case in detail in Episode 23 of the Entertainment Law Update Podcast.

Entertainment Law Update Podcast: Beauty Pageants and Super Bowls

Film attorney Gordon P. Firemark and music lawyer Tamera H. Bennett have put Episode 18 of the Entertainment Law Update “in the can.”

Catch up on Sheppard Fairey, Jimi Hendrix, and Hurt Locker litigation matters.  New hot topics include litigation over the “Super Bowl” temporary seating, a Texas beauty queen dethroned, and Lady Gaga vs. Madonna.

iTunes Has The Beatles: But No Garth, AC/DC, Kid Rock…..

It’s old news know that The Beatles tracks are  available on iTunes. Read more from The Wall Street Journal on how the deal was done.

There are still a handful of artists that have i) the creative control with their record labels, or ii) control their own masters and can determine when and how their albums will be available for download on iTunes.  There are varied reasons for not getting on board with iTunes, but one of the major concerns of acts like Kid Rock and Garth Brooks is the inability of the artist/label to control album only downloads versus singles downloads.

Your search for AC/DC, Kid Rock, Def Leppard, Garth Brooks and Bob Seger will only lead to “sound a-likes” on iTunes.  On Episode 9 of the Entertainment Law Update Podcast, Texas music attorney Tamera Bennett and LA film attorney Gordon Firemark discussed with Jason Pascal, VP & Senior Counsel with The Orchard,  the success to be had by cover bands issuing digital only releases when the original artists’ tracks are not available.

Entertainment Law Update Podcast Episode 14

Dallas Music Lawyer Tamera H. Bennett and Los Angeles  Theater Lawyer Gordon P. Firemark discussed Mockumentaries, Downloads, Licenses, and First Sale issues in Episode 14 of the Entertainment Law Update Podcast.

If you are a licensed California attorney, CLE credit hours are available.  In most other states, listening to the podcast will qualify for “self-study” cle hours.

Podcast: Entertainment Law Update Episode 13

Lucky Episode 13 of the Entertainment Law Update Podcast with hosts  Los Angeles based film lawyer Gordon P. Firemark and Texas based music lawyer Tamera H. Bennett is available here.

Gordon and I had a lot of fun this month discussing multiple topics including:

Justin Bieber’s Twitter “prank”
Judge Gertner’s recent opinion in Sony v. Tenenbaum
Child labor laws and the production of “Kate Plus 8″
Fleeting Expletives
Don Johnson/Alan Ladd, Jr./Celedor — Profit Participation Wins

Take a listen to stay up-to-date on film law, music law, copyright law and trademark law.

Entertainment Law Update Podcast Episode 12 Now Available

In the latest episode of the Entertainment Law Update podcast, Tamera H. Bennett and Gordon Firemark explore:

• Follow ups on Hot News
• Viacom loses suit against YouTube.
• Hurt Locker Suit(s)
• Idea Theft
• Tribute Band Names
• Celebrity Rights of publicity

To listen to the podcast, click here.

Entertainment Law Update Podcast Episode 9

New Entertainment Law Update podcast 9 just uploaded.  Click here to listen.

Topics include

Olympic Brand Management: Tweets, Blogs, DMCA, Trademark, Copyright

Pink Floyd and singles downloads:  Special Guest is Jason Pascal, Vice President & Senior Counsel at The Orchard

Avatar/Hurt Locker: Litigation post Academy Awards

Transformative Use:  Sculptures, pictures, postage stamps

As always, thanks to entertainment/film attorney Gordon Firemark for asking me to co-host.

“Nexus One” Likelihood of Confusion With “Nexus” Says Trademark Examiner

Google, Inc. received an initial refusal from the U.S. Patent and Trademark Office for its trademark application for “Nexus One” in connection with mobile phones (Serial number 77891022).

The trademark examiner held  there was a likelihood of consumer confusion between the mark “Nexus One” for mobile phones and the mark “Nexus” for a variety of telecommunication services.

Here, the applicant seeks registration of the mark NEXUS ONE for use in connection with “mobile phones”.  The registrant uses the mark NEXUS in connection with “providing telecommunication services, namely, transmission of data and voice, and enhanced calling features, namely, conference calling, call forwarding, call rejection, call return, call waiting, caller ID, caller ID block, continuous redial, specialized ringing services, fax overflow services, line hunting, speed calling, long distance telephone service, inbound toll-free service, voice mail, and high-speed access to a global computer network, all of the foregoing excluding providing multiple-user access to a global computer information network for participants in the physical oil industry”.

Google will have a period of six months to prepare and submit a response to the USPTO.  If Google cannot overcome the refusal, a Final Refusal will issue and Google will have six months from the issuance of a Final Refusal to file any new information and/or an Appeal.

This is a long ways from being over.

Attorney Gordon Firemark and I discussed this matter in January 2010 in Episode 8 of the Entertainment Law Update Podcast.

Yo Quiero Domain Name – Yum! Brands (Taco Bell) v. Nelson Wellness & Therapy Center

You may have seen Taco Bell’s New Year weight loss campaign, “Drive Thru Diet.”  I have to admit, I have sampled the menu.

Taco Bell acquired www.drivethrudiet.com prior to the campaign launch in 2010, but did not secure www.drivethroughdiet.com, a domain owned by a Georgia weight loss center.

Yum! Brands, the parent company of Taco Bell, filed a UDRP Bad Faith action to acquire the Georgia weight loss center’s domain name.

The arbitration panel denied Yum! Brand’s request to transfer drivethroughdiet.com based on 4 factors:

• 1) Drivethrudiet.com was under construction until December 21, 2009;
• 2) Yum! Brands did not provide evidence of using their trademark first;
• 3) The trademark registration for, DRIVE-THRU DIET was assigned to Yum! Brands in October 2008, and
• 4) There was no evidence the Georgia weight loss center had registered and used their domain in bad faith.

To be successful on an UDRP bad faith/cybersquatting claiming the following factors must be meet:

• Domain name in question is identical or confusingly similar to a trademark in which Complainant has rights
• Respondent has no legitimate rights/interests in domain name
• Domain name has been registered and used in bad faith.

Read the arbitration decision here.

Listen to attorney Tamera Bennett and attorney Gordon Firemark discuss this decision on the Entertainment Law Update Podcast Episode 8.

Entertainment Law Update Podcast Episode 6

by Tamera H. Bennett

Once again, my thanks to entertainment attorney Gordon Firemark for asking me to co-host the Entertainment Law Update Podcast.  Episode 6 is available for downloading here. Make sure to take a look at the show notes, which I have summarized below.

• Noonan v. Staples -  Jury: Truthful E-Mail Sent About Fired Staples Manager Wasn’t Libelous
• Disney settles with Luxo over the Luxo Jr. Lamp
• Carly Simon is suing her record label & starbucks over poor marketing of record
• FTC New Guidelines For Bloggers
• Vent v. Mars Snackfood U.S., LLC — idea submission case in New Jersey
• The Weinstein Co. v. Smokewood Entertainment: Decision reached in “Push” case regarding writing required to transfer exclusive rights.
• Jon Gosselin has countersued TLC
• California’s new anti-paparazzi statute
• Beatles music catalog finally available online.. but is it legal?
• Radio Station liable for wrongful death of contestant
• ASCAP lost Public Performance lawsuit on ringtunes; ASCAP and BMI may bring case for Public Performance in film/tv downloads
• Copyright Termination of Transfers under §203 and §304.
• Celebrity Identity Theft with guest Samantha Rothaus.

Entertainment Law Update Podcast with Tamera Bennett and Gordon Firemark

by Tamera H. Bennett

Thanks again to lawyer Gordon Firmark for including me as the co-host on the Entertainment Law Update Podcast.  Episode 5 is available here.

We discussed hot legal topics including the following:

Launchcast

Jessica Seinfeld

Annie Leibovitz

The Ellen Degeneres Show

Entertainment Law Update Podcast 3 and 4

by Tamera H. Bennett

Ready for your monthly dose of all things entertainment law?  Talk about speed reading … this is speed listening.  Each episode is a great hour of the latest news impacting entertainment lawyers and their clients.

As always, thank you to attorney Gordon Firemark for allowing me to co-host the program.

Episode 4 Topics Include:
Copyright Office Regulation Changes
Updates on J.D. Salinger Copyright Dispute
Joel Tenenbaum Admits to File Sharing
Prevailing Party and Purposeful Availment  in 9th Circuit
Reebok Endorsement
Erin Andrews Photo
College Athletes’ Right of Publicity
The Pope’s View on Intellectual Property Laws
The Wall Street Bull Case and The Little Mermaid Case
Copyright Issues in the Obama Poster
Lego Brand v. Spinal Tap

Episode 3 Topics Include:
Copyright Office Fee Increase and BackLog
Web Radio Settlement
ASCAP: Is A Cell Phone Ring A Public Performance
Jammie Thomas – Rassett loses file sharing suit brought by RIAA
JD Salinger prevents publication of new book
Google Class Action Update
Joel Tenenbaum Continued RIAA Litigation
Fair Use Update
Canned Music In The Theatre
Protecting The Chocolate Lindt Bunny
Special Guest Spot on Defamation Issues with Adrianos Fachetti.

Entertainment Law Update Podcast 2

by Tamera H. Bennett

Had another great time co-hosting the Entertainment Law Update Podcast

with attorney Gordon Firemark.  You can hear, download and subscribe to the podcast here.

Topics (with lots of links) include:

• Congratulations to Maren Christensen, Executive VP and General Counsel at Universal Studios,  who’s been named Beverly Hills Bar Association’s Entertainment Lawyer of the Year for 2009.
• Supreme Court Nominee  Sotomayor’s background and 2nd Circuit ruling in favor of statutory damages as deterrent.
• Backlog at the Copyright Office.
• Does the Register of Copyrights hold office lawfully?  A pending Constitutional Appointments Clause challenge  questions the validity of CRB appointments, but what about the Register’s ministerial Acts?
• Sports Leagues losing control of fantasy-sports leagues as Courts rule that the First Amendment trumps rights of publicity, and player statistics, etc., where there’s a public interest in the information.
• Good discussion of “Access” element of copying analysis in ruling on Summary Judgment for Defendant in song plagiarism suit.
• Warner Music issues DMCA Takedown on Organization that hosted Prof. Lessig talk
• Woody Allen/American Apparel case settles
• SAG settles Force Majeure claims
• Tenenbaum’s fair use argument – Case is set for trial July 20.

Entertainment Law Update Podcast Episode 1

by Tamera H. Bennett

Glad to be joining Entertainment attorney Gordon Firemark on the Entertainment Law Update Podcast.

Episode One gives the listeners some insight into the following topics:

• SAG & AMPTP have arrived at a deal…
• The competing “Octomom” trademark registrations
• Is giving a (loaded) iPod as a gift an act of copyright infringement? (First Sale and Fair Use) (President’s gift to Queen ElizabethII)
• Copyright and Defamation issues in new social media… Twitter, Facebook, etc. Courtney Love being sued.. a cautionary tale for anybody who uses the Web? 1st Circuit won’t review defamation ruling in Noonan vs. Staples.
• Copyright holders taking action against content “scraping” websites. (Hot News doctrine)
• Fair Use, YouTube, DMCA takedowns, etc. -YouTube says 37% of DMCA takedown notices are not valid copyright claims, etc.
• Wish Upon a star” – Fox’s “Family Guy” “parody”/”satire”
  Litigation: “Push” lawsuits – When is a deal a deal?
• Featured Topic: Ownership of partners’ and principals’ intellectual property contributions to a business in the absence of employment agreements.

Check with your state cle reporting.   If you are a Texas attorney, listening to the Entertainment Law Update can count toward your self-study credits.  MCLE credit with a reporting number/certificate are pending for Texas and California.

Entertainment Law Update Podcast Launching

Launching April 20th, Entertainment Law Update is an audio podcast featuring Entertainment lawyers Gordon P. Firemark and Tamera H. Bennett.

Every month, our hosts and guests will survey the legal landscape of the entertainment industry, discussing the top cases and news stories of interest to lawyers and entertainment business professionals.

Each episode will feature a news roundup, discussion of recent case law, and an in-depth discussion on a legal issue, or other practical topic of interest to our listeners.

Attorneys who listen can opt into receiving continuing legal education credit*, and the programs will be of interest to all entertainment and media professionals.

Producer and host Gordon Firemark says, “We’re really hoping this will be a dialogue with our audience. Listener feedback is more than just welcome, we’re counting on it. Our colleagues in the legal profession are encouraged to submit topic ideas, and we hope to select guests to join us from those who submit ideas.”

Listeners can find (and listen to) the podcast at http://www.entertainmentlawupdate.com
or can subscribe using the iTunes store** or the handy links on the website.

*(pending approval by applicable bar associations)
**(available soon)