Author Archives: ipandentertainmentlaw

About ipandentertainmentlaw

Tamera Bennett, nicknamed by her clients as the IP quarterback, develops strategies to protect and leverage each client's intellectual property. She works closely with her clients to implement customized brand management programs. Her clients range from rock star to leadership coach and financial guru to custom motorcycle designer. Prepared with an undergraduate degree in Recording Industry Studies and a law degree from Texas Wesleyan University School of Law, Tamera represents clients throughout Texas and Tennessee in entertainment, trademark and copyright law related matters


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Who Controls Your Likeness? Balancing Right of Publicity and Free Speech

Just a quick note to let you know our blog has a new home.  Click here for all the new content for the Create Protect blog and subscribe to the RSS feed.

Originally Published in TEXAS LAWYER*

Sharing photos has never been easier. From checking out Ellen Degeneres’ selfies at the Oscars to uploading family vacation pictures, even lawyers don’t always think through how third parties might use their likenesses. But two pending court cases might change that.

Imagine that a photographer allows an engaged couple to post engagement photos online. Then, a political mailer features—without the couple’s permission—a photo of them kissing, superimposed on a new background with the prominent text “State Sen. [XYZ]’s idea of ‘family values’?” It happens during a heated primary race where gay marriage is a hot button topic, the mailers oppose same-sex marriage, and the newly engaged people are two gay men.

Or, imagine someone learning via Facebook that a full-color, quarter-page advertisement used her likeness and included the statements: “I am positive (+),” “I have rights,” and “People who are HIV positive are protected by the New York State Human Rights Law. Do you know your rights?” By the way, the woman doesn’t have HIV and didn’t authorize use of her likeness.

Both fact patterns are the subjects of current litigation, with the plaintiffs bringing causes of action for misappropriation of the right of publicity and/or privacy.

Colorado common law governing torts for appropriation of name or likeness controls the political mailer case. The law requires a plaintiff to prove that: the defendant used the plaintiff’s name or likeness; the use was for the defendant’s own purposes or benefit, commercially or otherwise; the plaintiff suffered damages; and the defendant caused the damages.

In a March 31 opinion in Hill v. Public Advocate of the United States, the U.S. District Court for the District of Colorado granted the defendants’ motions to dismiss in relevant part; the defendants are all political advocates. The Hill court stated, “[A] plaintiff will not prevail on [an appropriation claim] if a ‘defendant’s use of the plaintiff’s name and likeness is privileged under the First Amendment.'” But the use of the name and likeness must occur in the context of, and reasonably relate to, a publication concerning a matter that is newsworthy or of legitimate public concern.

The court found that the men’s images were used without permission, but the use was not commercial. The use communicated a matter of legitimate public concern and did not issue a call to purchase a product or service. The mailers were sent before an election in a year when gay marriage was a campaign issue. The mailers also went out before Colorado lawmakers enacted the Colorado Civil Union Law, which grants same-sex couples the right to enter into a civil union.

The district court determined that the use of the gentlemen’s likeness reasonably related to a matter of legitimate public concern: same-sex marriage. The court’s balancing act weighed heavily in favor of free speech based upon the timeliness of the mailers. In the end, the First Amendment trumped the individual right of publicity.

Let’s revisit the HIV awareness campaign issue. According to the complaint filed on Sept. 18, 2013, in Nolan v. Getty Images (US) Inc., Avril Nolan alleged that a photographer took her picture years ago for an unrelated project. Nolan never signed a release or license with the photographer to use the picture. Subsequently, the photographer licensed the photo to Getty, a worldwide commercial supplier of images. Getty licensed Nolan’s picture to the New York State Division of Human Rights to place in the AIDS awareness “I am positive(+)” campaign.

In the March 6 New York trial court opinion, the court stated that New York does not recognize the common law misappropriation torts of privacy or publicity. Instead, the rights and cause of action are statutory. Under New York Civil Right Law §50, an entity “that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person … is guilty of a misdemeanor.”

The trial court denied Getty’s motion to dismiss for failure to state a cause of action on March 6. The court found Getty’s action—placing Nolan’s image on its website for viewing by potential licensees—met the statutory requirement of “use” within the state.

Questions to Consider

It’s unclear to me how Getty’s alleged actions violate §50. But what if Nolan had sued the New York State Division of Human Rights? In that scenario, the Colorado federal court’s reasoning in Hill might provide insight. Arguably, the HIV awareness campaign communicated a matter of legitimate public concern, so free speech might trump the right of publicity or privacy.

I wonder if, in either case, it would make a difference if the individuals pictured in the likeness allegedly used without authorization had been famous. Would a “commercial nature” begin to arise if it looked as if a famous athlete or actor was opposing gay marriage or supporting HIV awareness? While the tort of misappropriation applies to people who aren’t famous, the scales balancing First Amendment and right of publicity might tip differently if the likeness used is well-known.

These cases should remind lawyers to think twice—and perhaps a third time—before posting that next selfie. You just don’t know where it might end up.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office in Lewisville.

*Reprinted with permission from the April 14, 2014 print edition of Texas Lawyer. © 2014 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.  Read more:

BMG Rights Management Buys Hal David Song Catalog

As reported by BILLBOARD, BMG Rights Management acquired Hal David’s music publishing catalog at an estimated $42 million.  Net publisher’s share is in the range of $3. 5 to $3.8 million and it is anticipated a multiplier of 11-13 times NPS was used to reach the purchase price.

Read more here on how Net Publisher’s Share is calculated.

Kind Sues Cliff For Trade Dress Infringement

Kind, LLC thinks new product packaging from competitor Cliff Bar & Company is an infringement on the KIND brand trade dress shown above.

Currently Cliff Bar & Company packages their MOJO bar with a half-moon transparent opening.

The proposed new packaging for the MOJO bar has a transparent cover separated by a non-transparent stripe. Kind says the change in packaging is just too close and consumers will be confused.

Click here for a visual of the transformation of MOJO packaging.

Trade dress for product packing and product design may be registered with the U.S. Patent and Trademark Office. Famous trade dress includes the design of the COKE bottle and the “Golden Arches” of McDonald’s.

Drake Claims An Owl Design Is Not Protected by Copyright

Recording artist Drake was sued for copyright infringement for replicating a 3-dimensional “owl design” necklace.

While no one person could ever claim exclusive rights to an owl on a piece of jewelry, the very nature of copyright allows the same idea to be expressed in many different ways.  And, the copyright owner has the exclusive right to duplicate, or grant others the right to duplicate, their work.

Even if Drake specially ordered the Owl Necklace, if there was no written document assigning the copyright from the jewelry designer that created the design to Drake, the jewelry designer is in fact the copyright owner.   According to the lawsuit filed in August 2013, the artist that created the design is an employee of Baden Baden, Inc. and  Baden Baden, Inc. is the copyright owner. A copyright registration was issued by the U.S. Copyright office listing the jeweler’s employee as the author and copyright claimant.  Currently a correction of the Copyright Registration has been filed to reflect Baden Baden, Inc. as the copyright claimant pursuant to the jewelry designer being an employe of Baden Baden.

Venom v. Venom in the Trademark World

NIKE, Inc. might end up in a choke hold in its trademark infringement battle against mixed martial arts clothing brand VENOM.

NIKE has used the trademark VENOM for athletic equipment and apparel since 2002.  And, NIKE has a U.S. trademark registration issued in 2003 for softball bats. NIKE claims common law trademark rights for apparel.

Defendant,  Dragon Bleu SARL, a French company, has a U.S. trademark registration issued in 2011 for VENUM with a snake design for “Martial arts and boxing clothes, namely, martial arts uniforms, shorts, kimonos; Sport shoes, especially for the practice of martial arts.”

And, the venom is spewing in Federal District Court in Oregon as well as France.  Dragon Bleu SARL filed suit in France alleging the NIKE brand of HYPERVENOM is an infringement of the Dragon Bleu brand VENOM.  NIKE responded with the suit in Oregon for trademark infringement, false designation of origin and cancellation of the VENOM with design mark.

Link to the complaint.

Entertainment Law Update Podcast – Episode 47

bennett tamera color close crop Gordon FiremarkFilm/TV lawyer Gordon Firemark and Copyright/Trademark lawyer Tamera Bennett cover a “Motley Crew” of topics this month including trademark, copyright, film and tv legal issues surrounding the “Counting Crows,” “Raging Bull,” “Insane Clown Possee,” and “Sherlock Holmes” …. to name a few.  Click here to listen.

Sherlock Holmes – Some Copyright, Some Not

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”

Read more about the history of the  dispute and ongoing trademark issues here.

Hear film lawyer Gordon Firemark and copyright lawyer Tamera Bennett discuss the case on the Entertainment Law Update Podcast Episode 47 and Episode 43.

Ambush Marketing – Sochi Olympics 2014

Ambush marketing, the act of a product or service trying to attach itself to a big event without being an official sponsor of the event, is alive and well surrounding the Sochi Olympic Games.

Here’s a round-up of news stories worth a read:

American Apparel Strikes Marketing Gold – The company released a line of “Principle 6” clothing which includes a variation of language from the Olympic Charter.

Any form of discrimination with regard to a country or a person on grounds of race, religion, politics, gender or otherwise is incompatible with belonging to the Olympic Movement.

The Canadian Olympic Committee thinks a LaBatt beer commercial featuring a large Budweiser blimp designed to look like a hockey goal light, along with scenes of fans in Moscow, is a little too close.  While Budweiser has an affiliation with the US Olympic Committee, LaBatt Brewing Company is not a sponsor for the Canadian Olympic Team.

And, more from the Canadians, they Canadian Olympic Committee sued outerwear/cold weather brand NORTH FACE for launching a line of clothing in Red/White featuring the maple leaf and referring to the clothing line as the “international collection” ready for “village wear.”

Samsung, an official sponsor of the Sochi Games, gave the athletes a Galaxy Note 3. But, there was another “note” included in the gift bag saying cover up logos on any other phone you might be using.  Samsung, like the other 10 official sponsors of the Winter Games, does not want their competitors’ trademarks on display.

Top Trademark/Copyright/Entertainment Law Posts of 2013

Just a quick note to let you know our blog has a new home.  Click here for all the new content for the Create Protect blog and subscribe to the RSS feed.

As we say goodbye to 2013, it’s always fun to look back and see what our readers enjoyed. There’s a great mix of trademark, copyright and music publishing cases.

Most visited posts in 2013 (no matter original post date):

Number 5:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion
Number 4:  Do I Need A Music Lawyer?
Number 3:  Music Publishing: A Good Investment
Number 2:  New Recording Artist Checklist: What Every Artist Should Think About
Number 1:  Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot

and a little variation on a theme – the Most visited posts that were originally posted in 2013:

Number 5:  Drybar vs Blow Dry Bar – Trademark for Blow Drying Hair
Number 4:  Sherlock Holmes, Elementary, Copyright Protection and Trademarks
Number 3:  Duck Dynasty – What Contract Clause Did Phil Violate?
Number 2:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion
Number 1:  Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot

Duck Dynasty – What Contract Clause Did Phil Violate? The Morals Clause?

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This post is not about agreeing, disagreeing, supporting, or not supporting the comments made by Duck Dynasty Patriarch Phil Robertson.  As an entertainment lawyer, this post is to raise conversations with lawyers and industry professionals on what contractually grounds give A&E the ability to terminate Phil from the Duck Dynasty show.

Phil made public statements regarding his personal beliefs that did not sit well with A&E.  While I do not have a connection to A&E or Duck Dynasty, I do have sample contractual language that may be similar to Phil’s agreement.  Interestingly enough, the language I suspect A&E used to terminate Phil is found in what we entertainment lawyers call a “Morals Clause.”  This is the clause that was used by GILLETTE and other endorsers of Tiger Woods to terminate his endorsement deals when facts about his personal life came to light.

A Morals Clause allows the studio/production company/endorser to terminate a contract when the actor or athlete commits conduct that “casts disrepute on the studio or industry.”

If the Network or Producer becomes aware that Artist has previously committed any such acts or has engaged in behavior that the Network or Producer reasonably determines brings or may bring Artist, Producer, the Network or the Network’s sponsors into widespread public disrepute, scandal or ridicule or which reflects or may reflect unfavorably upon Artist, Producer, the Network or a sponsor, then Producer shall be entitled to terminate this Agreement forthwith by giving Artist notice of termination in writing at any time after the Network or Producer acquires knowledge of such act or conduct.

Termination under the Morals Clause usually occurs when there has been an allegation of criminal or civil charges against the artist or athlete.  Or, in the case of Tiger Woods, many allegations of marital infidelity.

Does A&E have an implied covenant of good faith and fair dealing not to act arbitrarily, irrationally or unreasonably in exercising discretion to execute its termination rights under the morals clause of the contract?  At least one court held recently that invoking a Morals Clause because of a Tweet made by an athlete the brand endorsed was not enough to trigger termination.

Lawyers and industry professionals, please leave your thoughts and comments.  I may delete comments that do not add to the legal conversation.

Gamers Beware – YouTube Takedowns on “Let’s Play” Videos

Guest Post by Gaming Lawyer Zachary Strebeck

Gamers beware – YouTube will take you down for “Let’s Play” videos.  A flurry of activity occurred in early December as YouTube users posting “Let’s Play” videos, which generally feature recorded gameplay with running commentary by the user, were hit with Content ID takedown claims resulting in thousands of blocked videos.

To battle copyright infringing content on Youtube, YouTube’s Content ID system matches up content with the supposed copyright owner and then allows copyright holders to

  1. automatically block the third-party posted infringing content; or
  2. divert any ad revenue from the third-party posted video to the actual copyright owner.

According to reports, some takedown claims did not come from the actual copyright owner.  What’s more interesting is YouTube activated this round of Content ID matches without the support of the game developers. So far, many game developers are united in allowing the “Let’s Play” videos on YouTube.

Copyright Grant Termination Can Undo Songwriter Estate Plan Part 1

Ray Charles planned ahead and gave each of his 12 children $500,000 in trust as their inheritance and required a release of any future claims against his estate.  What he didn’t plan on was his heirs (children) exercising their ability under the U.S. Copyright Act to file notice of termination of the copyright assignments for Charles’ songs and reclaim those revenue streams.  Charles left the bulk of his estate, including his copyright assets, to The Ray Charles Foundation for the benefit of hearing and seeing impaired persons.

There are two schemes for termination of copyright grants under the U.S. Copyright law and they arise from works created and published pre or post January 1, 1978.  Ray Charles’ wrote songs and signed copyright assignments falling into both categories, which makes this a very rich fact pattern.  The specific timing requirements for the notices are covered in detail here.

In a legal opinion focused primarily on the applicability of California’s Anti-Slapp statute, you’ll find some great nuggets on the intersection of estate planning and copyright law.

1.  A copyright grant termination notice is not “a claim against the estate” if probate on the estate has closed.   Which raises the questions: what if probate is still pending? or probate never occurred and the window of time under state law probate proceedings has past? or filing a notice of termination would be timely while probate is pending? or the heirs must file the termination notices before the probate proceedings end to fall with the notice window?

2.  If copyrights were created as “Works for Hire” then the copyrights were never part of the author’s estate and filing the notice of termination could not be a claim against the estate.  Of course, no heir wants to argue “work for hire” because anything created as a work for hire does not have a right of termination.

3.  A termination right is inalienable because under the statute, “termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or a future grant.”  Does this mean there is no way for an author to control post-death what happens to his/her copyrights?

The opinion in this case was rendered in early 2013.  While notice of an appeal was filed, there has been no additional recorded court activity.  I suspect The Ray Charles Foundation and the heirs are entering into some form of negotiation.  Which leads to Part 2 of this post (coming soon) which addresses why The Ray Charles Foundation needs the Charles’ heirs to maximize the value of the Foundation.

I’ve written numerous times about heirs reversing an estate plan via their statutory rights granted under the U.S. Copyright Act in relationship to Renewal of Copyright and Termination of Copyright Grants.  Read more here, here, and here.

Applicable code sections: 17 U.S.C. 203, 304.

Case cite: The Ray Charles Foundation v. Robinson, 2:12-cv-02725-ABC-FFM, (USDC Cal. 2013).

Malcom X Heirs Sue for Copyright Infringement and Injunction

The Heirs of Malcom X sue to stop the publication of key portions of Malcom X’s diaries.  While the diaries were donated to the New York Public Library, the family argues no copyright transfer has occurred to allow defendant, Third World Press, to print all or any portion of the diaries.    The family, via the entity X Legacy, LLC, seeks emergency injunction relief to stop the publication.  To add to the confusion, one of Malcom X’s daughters is an editor of the project and seems to be defending the actions of Third World Press.

Donating of papers to a library or other organization is a common practice of high-profile individuals.  The act of donation does not constitute a transfer of the copyright.  At a minimum, in accordance with the terms of the donation or loan agreement, the donee may have the ability to display the materials for research purposes or public review.

At this stage in the litigation process, it is unclear on what grounds Third World Press, LLC is claiming they have the right to reproduce and distribute the diaries.

Charbucks Trademark Does Not Infringe Starbucks

Starbucks Trademark Charbucks Trademark  New Hampshire coffee roaster, The Black Bear, won its 12-year battle against Starbucks, when the Second Court of Appeals confirmed the lower court’s ruling of no trademark infringement.   The district court found no likelihood of consumer confusion between the coffee blend called “Charbucks” and the trademark Starbucks.

Starbucks takes an aggressive stance against potential trademark infringers. I blogged in 2006 about many of Starbucks then on-going cases.  In the Charbucks case, the survey evidence submitted by Starbucks to try and prove a likelihood of consumer confusion, actually worked against Starbucks and the fact finder in the case did not find it persuasive that consumers were confused.

Do I Need A Trademark Lawyer?

trademark Having a trademark attorney on your product or service branding team is key to success.  A trademark lawyer can spot potential pitfalls and help you navigate the complex application and follow-up process with the US Patent and Trademark Office (USPTO).  While anyone can file a trademark application with the USPTO, there are intricacies to 1) determining the strength of your trademark; 2) reviewing how other people might be using the same or similar trademark; and 3) appropriately answering the questions on the trademark application.

A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.

The job of a trademark attorney is to guide you in selecting  a strong trademark; navigate the application process; counsel you in your options if your trademark application is refused (office action issued); and prepare you for what happens after you secure a registration.

If you are ready to learn more about the trademark application process click here.

Hells Angels Sue Dillard’s and Rapper Clothing Line for Trademark Infringement

Hells Angel Trademark8732 Trademark


After you enjoy this post, hop over to the new location for the CREATE PROTECT blog found here and subscribe to the RSS feed to keep you up-to-date on trademark, copyright and entertainment law matters.

The Hells Angels Motorcycle Club’s distinctive brand identifier of the winged skull logo called the “Death Head,” in use by the club since 1948, is the driving force behind a trademark lawsuit against 8732 Apparel, LLC and Dillards, Inc.  8732 is owned by rapper Young Jeezy.

The test for trademark infringement is likelihood of consumer confusion regarding the source of the product.  The first part of the test determines the similarity of the marks.  Removing my trademark lawyer cap and simply looking at these jackets as a consumer: I’m confused.  Even without going through all the steps of the likelihood of confusion test, it looks like HAMC should have a winner.

What do you think?

Link to complaint at

Making Money In A Digital Age: Bootcamp On Digital Royalty Strategies

Making Money in a Digital Age:   Maximizing your client’s film and music revenues with various digital options available at our fingertips.  Join the Sports & Entertainment Law Section of the Dallas Bar Association for a Boot Camp all about digital distribution for film, music, & television. Learn how to maximize you or your client’s film, music, or tv revenues with various digital options available at our fingertips.When: Friday, 18 OCT 2013 at 1:00pm
Where: Texas Theatre, 231 W. Jefferson Blvd, Dallas, TX 75208,  214-948-1546$25 for lawyers (MCLE Pending)
$20 for non-lawyers

To purchase tickets, please go to:

Music Panelists
Steven Corn – Los Angeles, California
Co-owner with BFM Digital

Andy R. Jordan – Dallas, Texas
Music producer for interactive media and documentary films

Lee Mezistrano – Seattle, Washington
Lawyer with Starbucks – Digital Ventures

Evan Stone – Dallas, Texas
Lawyer with FUNimation Entertainment and Partner at Stone and Vaughn PLLC

Film Panelists

Steven Masur – New York, New York
Lawyer, Venture Law Group Cowan Debaets Abrahams & Sheppard LLP

Ken Topolsky – Dallas, Texas
Producer, Dallas TV Show

Lise Romanoff – Los Angeles, California
Managing Director/CEO , Vision Films

Candy Wars – Trademark Cadbury Purple?

Cadbury lost a 9-year trademark battle to protect the iconic purple of its candy wrappers. The color, better known as Pantone 2685C, is the distinctive purple used by Cadbury to wrap its milk chocolate candy since WWI.

The Appeals Court in the UK stated the claims in Cadbury’s trademark application were too broad and they refused to grant the protection.   Rival candy company Nestlé has been a driving force behind the battle and is pleased with the outcome.  The Nestlé “Wonka Bar” is packaged in a similar color.

Trader Joe’s v. Pirate Joe’s – U.S. Law Does Not Apply

A U.S. District Judge in Seattle ruled that transporting and reselling unaltered “Trader Joe’s” branded products in Canada does not give rise to a lawsuit for trademark infringement in the United States under U.S. trademark laws.

Michael Hallatt owns “Pirate Joe’s” a grocery store in Canada that resells “Trader Joe’s” branded/trademark products.  “Trader Joe’s” does not have any stores in Canada.  Hallatt pays retail prices for the goods and claims the goods at the border crossing.

Hallatt does not act to deceive his customers as to the source of the goods and he does not alter the goods or their packing.

The court found the facts did not rise to the level where U.S. Trademark law should be applied to acts in a foreign country.


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