La-la-lawsuits: A Look at November’s Most Litigious Moments
December 1st, 2012
Pandora is suing ASCAP, one of the largest performance rights organizations, to implement lower statutory rates for songwriters. Pandora has called the current rates as “ill suited and not reasonable”. The major problem with this suit is that publishers, on the other hand, are trying to drive statutory rates up, not down. This is because Pandora currently pays record labels over ten times more on a song play than they do to publishers and songwriters. Furthermore, Sony/ATV isn’t making the suit easier for Pandora, since after recently acquiring EMI’s publishing catalog, Sony/ATV is pushing for their own independent royalty rates. This move by Sony/ATV is yet another reason why Pandora is pushing so hard to lower the rates.
A 2006 divorce between Tory Burch and Chris Burch has turned into a legal battle between the two, totally unrelated to any actual marital issues. In October 2011, Chris had opened up his own store, C Store, that is more affordable than the Tory Burch company line. However, the C Store’s appearance and inventory look a little too similar to the Tory Burch company’s merchandise and stores. Meanwhile, both Tory and Chris still own stake in the popular clothing line company. Mr. Burch filed a complaint earlier this month accusing Tory of delaying the sale of his shares of the Tory Burch company, along with other accusations regarding inappropriate board behavior (a breach of fiduciary duties). Tory answered the complaint with various counterclaims, including accusations that he is stealing the company’s trade secrets. The bottom line issue is whether the existence of C Wonder will negatively effect the value of the Tory Burch company. We will have to wait and see.
The Talent Agencies Act (TAA) in California is under attack by former personal managers of various stars. The TAA states that only licensed agents can procure employment for their clients. It was further decided that this restriction applies not only to talent agents, but personal managers, as well. In mid-November, The National Conference of Personal Managers (NCOPM) sued the CA governor, attorney general, and labor commissioner, claiming that the TAA is entirely unconstitutional and that is violates “due process, equal protection, involuntary servitude, and interferes with interstate commerce and free speech”. Essentially, clients can fire their managers and refuse to pay any commission to them because they weren’t licensed and technically not legally employable under the TAA.
Hurricane Sandy left quite a path of destruction, not only physically, but now also legally. New York resident, Irwin Bard, and his son are suing Cablevision for $250 million for non-existent cable, Internet, and phone services during the time of the power outages. Bard demands a rebate to all customers who were affected by this unfair charge. Cablevison assured their customers, however, that anyone who was overcharged can visit the Cablevision website and ask for a credit back. However, the issue is whether this should be automatic versus an “opt-in” action. The case is still undecided as of now.
La-la-lawsuits: A look back on January’s finest litigious moments
January 30th, 2012
EMI is suing MP3 reselling startup ReDigi.
More EMI lawsuits.. The company (via the Irish Music Rights Association) has now sued the entire country of Ireland in a High Court action for not doing enough to require ISPs to block websites that are engaging in piracy.
The Velvet Underground has sued the foundation that manages the legacy of Andy Warhol arguing that the artist of their iconic ‘banana’ album cover artwork has no copyright or trademark ownership over the image.
PacketVideo and Spotify have settled the lawsuit brought by PacketVideo, alleging that Spotify infringed its patent relating to streaming music from a central source. Details of the settlement have not been disclosed.
Former Disney executive VP Glen Lajeski filed a lawsuit against the studio alleging that his contract was breached when the company fired him last June. Lajeski was let go purportedly without any cause and without the opportunity to cure. His employment contract was not due to expire until January 1, 2013.
La-la-lawsuits: A Look Back at December’s Finest Litigious Moments
December 30th, 2011
Croatian journalist James Braddock has sued Angelina Jolie for copyright infringement of his book, The Soul Shattering (his website discusses the legal dispute in detail). Braddock claims Jolie’s directorial-debut documentary, In the Land of Blood and Honey, infringes upon his 2007 book. Braddock allegedly discussed the book in detail with the Bosnian producer of the film before the film was made. The movie commenced production in 2010, and Braddock only recently filed the lawsuit, just weeks before the scheduled release. Because of the late timing, the judge seemed reluctant to grant Braddock’s motion for a temporary restraining order and Braddock withdrew the motion before the decision was finalized. The case was filed with the federal court in Illinois, but the judge has indicated a likelihood he will transfer it to California, given that the parties – Croatian and Californian – have pretty much no connection to the midwest state.
The Meester family will be having a peaceful Christmas, now that the Gossip Girl star Leighton Meester and her mother Constance Meester have resolved their legal dispute. The suit began over Leighton alleging that Constance misused the actress’s money, then developed into the issue of whether Constance was entitled to compensation for her alleged role in guiding her daughter’s career. Most recently, Constance withdrew her claims leading to a default judgment in favor of Leighton.
The estate of Bruce Gary, drummer of the band The Knack (best known for the song “My Sharona”) has sued Capitol Records, claiming unpaid royalties for digital downloads. The issue is whether digital downloads on platforms such as iTunes count as a ‘license’ of the master or a ‘sale’ of the phonorecords under the recording agreement. Phonorecords implies the physical album sale, rather than digital and the label pays significantly lower royalties to artists on sales than licenses. For a license, the royalty rate could be up to 50%, whereas for a sale the rate would likely be closer to 12%.
2011 has been a rough year for The Hangover II. Earlier this year, Tyson’s tattoo artist sued over the use of the iconic face tattoo. Now Louis Vuitton is suing, claiming that the bag carried by Zach Galifianakis marked LVM was a fake. In the scene, Galifianakis says, ” “Careful, that is.. that is a Louis Vuitton.” LV is suing under state and federal claims for unfair competition, false designation of origin, and trademark dilution. The full complaint can be read here.
Event Alert: WIM Rocks Fashion Fair
September 7th, 2011
The non-profit organization Women in Music is putting on a Fashion Fair next week at Culture Fix. Free for WIM members or $5 at the door for non-members or non-members can join WIM at a special rate of $35, only at the event. Details below.
Louboutin Loses to YSL; Red Sole not Trademark Protected
August 11th, 2011
As I mentioned in a previous post, Christian Louboutin sued Yves Saint Laurent in April, alleging that YSL’s use of red colored soles infringed Louboutin’s trademarked red sole.
The court yesterday denied Louboutin’s request to grant a preliminary injunction restricting YSL from marketing the shoes at issue during the pendency of the action. The court held that Louboutin did not establish a likelihood of succeeding on the merits because Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.
Overview of the case is below; full opinion can be read here.
Background
The USPTO approved registration of Louboutin’s red sole mark in 2008. In early 2011, Louboutin approached YSL about a number of shoes in YSL’s Cruise 2011 Collection that incorporated red soles of a shade that Louboutin thought closely resembled its trademark protected color mark. YSL refused to remove the shoes from the market, so Louboutin filed suit against YSL for federal claims of trademark infringement and counterfeiting, false designation of origin and unfair competition and trademark dilution, as well as state law claims for trademark infringement, trademark dilution, unfair competition and unlawful deceptive acts and practices. YSL then asserted counterclaims seeking cancellation of the Red Sole Mark on the grounds that it is not distinctive, ornamental, functional, and was secured by fraud on the PTO, as well as damages for tortious interference with business relations and unfair competition.
The issue at hand was whether, despite Louboutin’s “innovation” and widespread public association between the brand and the red sole, trademark protection should have been granted.
Discussion
To obtain a preliminary injunction, Louboutin must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor].
The court looked to whether trademark infringement had occurred, first evaluating whether the mark at issue should be protected by trademark. The registration of the red sole mark gives rise to a statutory presumption of protection; however, this presumption can be rebutted. A color can be a protected trademark when it has acquired a secondary meaning associated with the brand, but it may not serve a function aside from being a brand identifier. Specifically, when related to fashion, the court noted, “color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes.” Some color marks used in fashion have merited trademark protection, usually being a combination of colors in a distinctive pattern that identifies the brand (think Louis Vuitton or Burberry).
The court here addressed the narrow issue of whether a single color mark can be granted for use in the fashion industry. By comparing fashion designers to painters, the court recognized the importance of the use of color in this specific industry and the role of color serving a creative, rather than commercial, purpose. “No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise.” Additionally, Louboutin himself acknowledges that the red sole serves nontrademark functions. Specifically, it is “sexy,” “engaging” and “attracts men to women who wear [the] shoes.” The court also found that granting of trademark protection over the mark would significantly hinder competition. Hence, Louboutin could not prove a likelihood of success on the merits of the case, so the court denied the preliminary injunction.
Of note is the fact that the court did not actually find in favor of YSL because YSL had not brought a motion for summary judgment. The court did note that if YSL had brought summary judgment, ”the Court’s conclusion that the Red Sole Mark is ornamental and functional in its fashion industry market would compel it to grant partial summary judgment in favor of YSL on YSL’s counterclaims seeking cancellation of Louboutin’s mark.”
The court did order all parties to appear at a “case management conference on August 17, 2011 at 2:00 p.m., at which Louboutin shall show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment cancelling Louboutin’s trademark at issue here for the reasons stated in the Court’s decision above.”
Textile Arts Center Artists in Residence Show, July 8 – August 16
June 30th, 2011
For the next month, the six artists in residence at the Textile Arts Center in Brooklyn will be showing their work, prepared over the last six months through their residencies. Among them, my dear friend and collaborator Denise Maroney will present the “first burka show in NYC.” Denise has been studying and creating burkas as both fashion items and symbols throughout her residency. Whatever your take on the controversial garment, it should be an interesting and conversation-provoking exhibit. Details below.
La-La-Lawsuits: A Look Back on June’s Finest Litigious Moments
June 30th, 2011
Back in April, Christian Leboutin slapped Yves Saint Laurent with a $1 million + lawsuit for trademark infringement, claiming that a pair of 2011 YSL shoes with a red sole violated Leboutin’s trademarked red soled shoe style and creates a likelihood of confusion in the marketplace. Most recently, YSL backfired with a claim that Leboutin had fraudulently trademarked the red sole in an attempt to monopolize that style in the shoe industry, a style that dates back to 18th century Europe as well as The Wizard of Oz. Trademark infringement suits are general fact intensive. One interesting fact of the case is that the YSL 2011 contained shoes with green soles, blue soles, red soles, etc. The case will likely be settled, as these high profile situations often are, but it does bring up questions as to what extent fashion designers can use trademark protection to claim exclusive use over a color.
The Black Keys (love them, by the way!) filed a copyright infringement lawsuit against a bank and advertising agency, claiming the defendants used the song “Tighten Up” without permission.
Dish Network has announced it has obtained a $25 million award and permanent injunction against nFusionOnline.com and affiliates for pirating its satellite television.
Snooki has lost her license and potentially faces a civil lawsuit in Italy for crashing her car into the police.
Gail Dosik, who has run a Greenwich Village bakery called ”One Tough Cookie” since 2005, is suing Scripps Network over the Food Network‘s forthcoming baking reality show, Tough Cookies, arguing that Food Network’s new show is likely to confuse consumers.
A California judge has ruled that celebrities who walk down the red carpet at an Hollywood event imply their consent to the use of their likeness in photographs. The ruling dismisses a class action lawsuit brought by Shirley Jones, star of the TV series The Partridge Family.
A day before scheduled to go to trial, Dr. Dre settled a lawsuit with his former record label WIDEawake Death Row Records over damages from unauthorized online sales of his album “The Chronic”.
Joan Jett and Cherie Currie, of the 1970s pop-punk group The Runaways, filed suit seeking to enjoin distribution of a 36-track album, Take It or Leave It, which features contemporary groups like The Donnas, Peaches and Dandy Warhols covering classic Runaways material such as “Cherry Bomb.” The pair claim that the release violates their right of publicity, using their likenesses to market the album without their permission. Generally, no permission is needed to record cover songs, as there is a compulsory mechanical license outlined in the Copyright Act with set royalty rates.
Warner Bros. settled the lawsuit with tattoo artist S. Victor Whitmill. Whitmill designed Mike Tyson’s famous face tattoo, and sued Warner Bros. over a similar version used in The Hangover 2 on Ed Helms face. Whitmill was denied an injunction to stop the theatrical release of the film, and Warner Bros. had said that if the case did not settle, it would digital modify the tattoo image for the video release of the film. Details of the settlement were not disclosed.
NBC prevailed in a lawsuit brought by writer Mark Gable, who claimed that the network stole a screenplay to create the hit series My Name is Earl.
The U.S. Supreme Court declined to review a case brought by the heirs of John Steinbeck to regain control of the author’s books by using of the Copyright Act’s termination provisions.
Hip hop artist Lil Wayne has been sued three times in one week over one album, Tha Carter III. In two of the lawsuits, separate producers are seeking unpaid royalties. The other lawsuit involves an illegal sampling claim by Bridgeport Music, the publisher that controls rights to many George Clinton & Parliament Funkadelic songs.
Viacom is suing Cablevision over Cablevision’s distribution of its channels including MTV, Comedy Central, and Nickelodeon on tablet devices like the iPad, claiming that such streaming constitutes a breach of contract and copyright infringement.
The Winklevoss twins dropped their 9th Circuit (California) lawsuit against Facebook related to the social networking site’s creation, reportedly accepting a settlement that was worth $65 million when they agreed to it in 2008; however, the next they day filed another suit against Facebook in Masachusetts federal court, seeking further discovery to support their claim that Facebook “intentionally or inadvertently suppressed evidence” during the 2008 settlement negotiations over whether Zuckerberg stole their business idea.
Rapper 50 Cent sued Internet advertising company Traffix Inc. for using his image without permission in the graphic “Shoot the Rapper” ad, which he says promotes violence and threatens his safety.
Kardashians Win Lawsuit over Pulling Out of Credit Card Sponsorship Deal
June 16th, 2011
The Kardashians managed to fend off a $75 million lawsuit, which claimed the girl’s caused the collapse of a credit card company by pulling out of a spokesperson deal and also making disparaging comments about the company.
Despite having a simple sponsorship agreement in place, the court looked to the important freedom of speech issues rather than addressing it as a traditional contract claim. The court granted the Kardashians’ anti-SLAPP motion, a California device that protects the right to comment on issues of public import, and also awarded them over $6k in attorneys fees. The decision noted that the credit card company’s services had garnered negative press from before the sponsorship deal, so the Kardashians were not to blame for the failure of the company.
Read more about the case here.