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.
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.
January 17th, 2012
Next week is the New York State Bar Association’s annual meeting. On Monday, January 23rd, the Entertainment, Arts & Sports Law Section will be holding its meeting in conjunction with a 4-credit MCLE.
The MCLE topics are:
NEW MODELS OF PUBLISHING: E-BOOKS, APPS, SELF-PUBLISHING AND OTHER CHALLENGES – This program will examine new developments in publishing that are challenging the accepted ways of doing business while also providing new revenue sources for both publishers and authors. Our panel will offer perspectives on digital rights and new distribution methods from the points of view of the publisher, literary agent and author. We will also discuss the impact of these developments on contract drafting and negotiations, rights licensing and other aspects of the publishing business.
CURRENT AND TRENDING TOPICS IN BRAND, FAMOUS PERSONALITY AND CHARACTER LICENSING: DEVELOPMENT TO BANKRUPTCY – This session will focus on two less discussed areas of licensing and intellectual property and trademark law: 1) the process of developing a brand and/or license platform for a celebrity, character, interactive property or existing corporate brand product from its initial negotiation from the owner of the underlying rights to licensee and retailer; and 2) the phenomenon of distressed brands, including the treatment of brands and accompanying licenses in bankruptcy, including the possible auction of that brand and licenses. Our experienced and distinguished panel will discuss real examples of both areas, giving the participant an understanding of the intricacies of developing and licensing nascent brands- both celebrity- or character- driven , as well as what occurs in bankruptcy situations- including the rudiments of an auction for different IP rights and the treatment of licenses of trademarks versus other intellectual property rights under U.S. bankruptcy laws.
Following the event, there will be a cocktail reception at UBS with live jazz music and a tour of the private art collection.
Registration information available here.
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.
September 30th, 2011
Sacha Baron Cohen and NBC Universal won a lawsuit brought by Richelle Olson and her husband, owners of a bingo hall which was filmed as part of the movie Bruno. Cohen, acting as the character Bruno, selected the bingo numbers and after each number related the number to a fact about his former male partner. Here is a more detailed description, from a footnote in the opinion: “After Cohen called out the Bingo number 36, he states that “36″ was the age of his former male partner. Later, when he calls out the number 3, he says that his former partner’s birthday was “May 3.” When he later calls out the number 59, he remarks that 59 was the number of his hotel room he stayed in when he met his former partner, and a few minutes later when he announces number 42, Cohen offers that “42 inches was his partner’s chest size. Finally, after Cohen announces the number 7, he comments that he met his partner on “July 7.” Some members of the audience can be heard laughing after each comment.” The comments enraged Ms. Olson and Cohen was escorted by security from the building, after which Ms. Olson went unconscious while hysterically crying and hit her head on the concrete floor causing two brain bleeds and and leaving her wheelchair-bound. The California Appeals Court sided with Cohen though, claiming that his statements were protected by the Constitution as free speech in making the film and touched upon a socially important issue – homosexuality, gay culture and homophobia. The Olsons are now responsible for paying Universal and Cohen’s attorneys fees for the case.
“The singing of a song does not create a trademark,” according to a California judge that Madonna may not have clothing line trademark rights in the phrase “Material Girl.” Madonna and her company, Material Girl Brand, are being sued by LA Triumph, an L.A.-based clothing company that claims to have sold “Material Girl” clothing since 1997 and has a registered trademark. Madonna sold $85 million dollars of “Material Girl” merchandise in the 80′s but the judge, in denying her motion to dismiss, found that merchandise sales ancillary to her music career did not necessarily create a trademark in the brand for clothing. The case will go to trial in October where a jury will hear all of the facts and make a final decision.
Napolean Pictures, the production company behind Napoleon Dynamite, is suing Fox Searchlight for $10 million for allegedly underreporting royalties, taking improper revenue deductions, breach of contract, and negligent misrepresentation in connection with the hit 2004 indie comedy. Searchlight had agreed in a term sheet to pay 31.66 percent of net profits on home video, but the plaintiffs claim that a 2008 audit reveals that Fox was only paying net royalties on home videos at a 9.66 percent rate, in addition to underreported royalties and improper deductions.
Bruno Mars filed suit in the Central District of California Superior Court, in an attempt to get out of his publishing deal with Bug Music. Mars alleges that the contract has actually been terminated because Bug did not properly exercise an option to renew the deal.
The Saul Zaentz Co., producer of the 1996 best picture winner The English Patient, has sued distributor Miramax and its former owner the Walt Disney Co. for $20 million in profits from the hit drama, alleging that the companies hid revenue, improperly allocated and deducted expenses and fees, and engaged in self-dealing with respect to the film.
Pandora, the web service that allows users to customize radio stations based on listening preferences, is facing a class action lawsuit in Michigan. The lawsuit claims that Pandora is breaching customer privacy by making users’ profile pages, including favorite songs and listener history, publicly available and searchable online. Additionally, the class action asserts that Pandora is violating privacy by integrating users’ listening records with their Facebook accounts. These acts purportedly violate Michigan’s Video Rental Privacy Act and Consumer Protection Act. The plaintiffs are demanding statutory damages of $5,000 per person.
Charlie Sheen, Warner Bros. and Two and a Half Men co-creator Chuck Lorre are settling their $100 million legal dispute. An official statement from WB: “Warner Bros. Television, Chuck Lorre and Charlie Sheen have resolved their dispute to the parties’ mutual satisfaction. The pending lawsuit and arbitration will be dismissed as to all parties. The parties have agreed to maintain confidentiality over the terms of the settlement.” Terms of the settlement were not disclosed, but $25 million has been the rumor, which includes a reinstatement of the revenue stream from past episodes of Two and a Half Men (even those filmed before his media meltdown) that WB had denied Sheen after he filed the lawsuit.
In August, Lady GaGa submitted a complaint to the National Arbitration Forum that alleged that the website ladygaga.org was registered in bad faith and in violation of her trademark. The owner of the site responded that it was merely a non-commercial, unofficial fan site for Gaga that “does not have any sponsored links or links to third-party websites which market and sell merchandise bearing Complainant’s trademark.” The owner of LadyGaga.org got her reward on Wednesday when three panelists at the National Arbitration Forum ruled that Lady Gaga had failed to show that respondent lacked legitimate interest in the disputed domain name.
And event more Lady Gaga drama – The latest lawsuit targets Excite Worldwide LLC, which is using the Gaga name to sell cosmetics and jewelry.
Universal Studios Home Entertainment is suing former COO Thomas Emrey for allegedly breaching his contract and fiduciary duties by leaving the company for DineEquity, which operates IHOP and Applebee’s. Universal says his employment contract ran through May 2012.
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.
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.
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.”
July 29th, 2011
Composer Jack Urbont is suing Sony Music Entertainment and Ghostface Killah for illegally sampling his “Iron Man Theme,” originally created for the 1960s television show, The Marvel Super Heroes.
A Florida judge dismissed a lawsuit brought by White Wave International Labs that claimed Lindsay Lohan and a business partner stole a formula for a sunless spray tan.
Orlando Magic (and former University of Arizona – go cats!) guard Gilbert Arenas recently followed Chris Bosh‘s and sued his ex-wife and the producers of VH1‘s Basketball Wives. Here’s the complaint.
A California Superior Court judge rejected Ticketmaster‘s settlement with a class of plaintiffs who claimed they were misled on “delivery fees” of concert tickets. According to the judge the settlement ”offered virtually no benefit to the class member.”
American Idol creator Simon Fuller filed a lawsuit against Fox and Simon Cowell for an exective producer credit and a piece of ‘X Factor’ revenues. More details about the case here.
A New York federal judge has dismissed a lawsuit by writer Martin Alexander who claimed he came up with a copyrighted sitcom entitled Loony Ben that bore a striking similarity to the Emmy-award winning ABC comedy Modern Family. Alexander’s list of similarities over a show to be focused on “a non-traditional family” was not enough to meet the New York court’s threshold for “substantial similarity,” so Alexander will not be getting his demanded 50% interest in the copyright.
Glee co-creator Ian Brennan is being sued his friend Michael Novick, who claims he was promised 15% in backend compensation on the hit Fox musical after helping Brennan develop the show.
Gossip Girl star Leighton Meester sued her mother for getting plastic surgery on Meester’s dime. The actress alleges her mother used money for plastic surgery, botox and hair extensions that Meester had sent for her brother’s care. A week later, the mother, Constance, filed her own lawsuit against Meester, claiming Constance “sacrificed her own happiness” for her daughter’s career by paying $230,000 for the actress’s acting classes and education. Constance also claims that Meester agreed to pay her $10,000 a month for her mother’s case, which Meester has never paid out.
A federal court in New York refused to dismiss David LaChapelle’s copyright infringement lawsuit against Rihanna, Def Jam Records and Black Dog Films. LaChapelle claims that the video for Rihanna’s “S&M” infringes upon a number of his photographs. The judge found that Rihanna’s team had access to LaChapelles work (they used it as references in their storyboard), that there is “substantial similarity” between the works, and that the fair use defense in this case is “misguided.” A pre-trial conference is set for August 10.
CBS sued Lucas Reiter, writer of NBC’s new show The Firm, for tortious interference with contract, breach of contract, and breach of the implied covenant of good faith and fair dealing. CBS is claiming that Reiter and Entertainment One developed The Firm for CBS under an exclusive contract (which paid over $250,000) and then took it to NBC without CBS’s permission. The Firm (show) picks up where Grisham’s novel The Firm leaves off. It is set to air midseason with Josh Lucas as the star.
T-Pain, the R&B singer and producer widely credited with popularizing auto-tune, is suing Antares Technologies, the inventor of the auto-tune technology. The singer is seeking an injunction to prevent Antavares from using his name, photograph, likeness, and his voice, claiming that continued implication of an endorsement will confuse and mislead the public and damage sales for his own new technologies, including his own voice-manipulation product “The T-Pain Effect.”
The View star Barbara Walters has been sued over allegations that she lied and defamed a woman in her 2008 autobiography Audition: A Memoir. Nancy Shay claims to have had a relationship with Walter’s daughter nearly 30 years ago when both were teenagers. Shay says she was expelled from school at Walters’ behest back then, thus ruining her life, and was bullied to remain silent all these years. Now, after being allegedly subject to an unflattering portrayal in Walters’ memoirs, Shay is suing for defamation.
Heavy-metal rocker turned radio host and conservative preacher Bradlee Dean is suing MSNBC and Rachel Maddow for allegedly defaming him in a segment when she quoted a radio show statement he had previous made which stated in part “Muslims are calling for the execution for homosexuals in America… They seem to be more moral than even the American Christians do. Because these people are livid about enforcing their laws, they know homosexuality is an abomination.” The lawsuit claims $50 million in damages and alleges that Maddow twisted Dean’s comments in an effort to undermine Republican presidential candidate Michele Bachmann.
Joe Pesci is suing Fiore Films for $3 million and punitive damages after claiming they cut his role and salary in their John Gotti biopic, Gotti: In the Shadow of My Father. Even though a contract was never signed, Pesci claims he was offered $3 million to play Gotti pal and enforcer Angelo Ruggiero and had already gained 30 pounds for the part.
July 22nd, 2011
Herrick, Feinstein LLC · 2 Park Ave. NYC
ICANN’S NEW TOP LEVEL DOMAIN PROGRAM FOR BRANDS
Brands, categories, even ideas can be your domain.
ICANN’s ruling on the domain registries forever altered the way brands, associations and other entities are represented online. The “dot com” era will soon be replaced with a myriad of possibilities involving “dot brand” and “dot generic” – essentially “dot anything.” The implications for SEO and trademark protection are critical, and the opportunities presented to brands, industry associations – even investors – is exploding.
Is this the new lakefront property bonanza of the Internet? This iBreakfast Conference will sort through the opportunities and surrounding issues.
Roland LaPlante, SVP, CMO, Afilias
Mike Davies, Marketing Director, Verisign Ken Hansen, Sen. Dir. Business Development, New TLDs, NeustarBen Crawford, CEO, CentralNic and dotBrand Solutions
Michael Berkens, Industry Consultant & Blogger Right Of The Dot
Wendy Selzer, Esq., Princeton Center for IT Policy Barry Werbin, IP Group Chair & Partner, Herrick, Feinstein LLP
Robert/Stuart Lawley, CEO, ICM Registry
Anastasia O’Rourke, Big Room Inc.
Scott Seitz, CEO, DotGay LLC
Edmun Chong, CEO, DotAsia Organisation;
Dirk Kirchenowski, Founder, Dot Berlin (remote)
Annalisa Roger, Founder/CEO DotGreen (remote)
Moderated by Paul Farkas, Smart TLDs
Presented by Alan Brody, TECHmarketing
US CODE: PRESS
How will the Web be impacted by New TLDs:
* The Impact of New TLDs on .Com, .Org, and Country-Code Domain Extensions;
* Brands and SMB Opportunities to Increase Brand Identity and Optimize Marketing and Need to Act Defensively;
* The Progression of World Cities gaining Sovereign Digital Land to Strengthen Public and Private Sectors and Global Relations;
* The Voice of Cultural and Interest Groups to be Heard Locally, Regionally, and Globally
Daily living is increasingly more connected with the internet. Social media, mobile apps, and on-demand cloud technology are taking us to places we have never been before. The increased ability to secure prime branding is needed as as the threshold to conduct and promote business is becoming exponentially democratized and across multiple touch-points across digital and social media Across most generations, digital natives and savvy users are using the web in so many new ways as virtual and physical worlds are merging to form our post-digital worlds.
The implications for big business, smbs, cities, content developers, advertisers, marketers, investors, interest groups and the mainstream social prosumer is overwhelming and portends a great new shift in the digital media world. While brands see opportunity, but fear trademark infringement. Cities and regions can follow-suit to countries, gaining new prime digital ground to optimize the needs and goals of its government, business, community and tourism sectors. Leading consortiums and entrepreneurs in key industry verticals have the opportunity to gain presence and traction within the crowded and noisy online, and soon mobile environment. Public interest groups and less-connected cultures have the chance for increased awareness and voice, but also the risk of greater digital divide.
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.
June 3rd, 2011
On May 13, 2011, the Southern District of New York ruled on the trademark infringement case between the U.S. Polo Association (USPA) and fashion corporation Polo Ralph Lauren.
Ralph Lauren owns federal trademark registrations for marks associated with the Polo brand, including the “Polo Player Logo” and the word mark “POLO.” The USPA owns more than 900 trademarks worldwide, including the “Double Horsemen Mark” and “U.S. Polo Assn.”
The USPA and Ralph Lauren have been bickering in court over trademarks since 1984, where the court found that the USPA’s had infringed Ralph Lauren’s Polo Player Logo, POLO word mark, and other work marks and trade dress. The USPA was enjoined from further infringement but could still use its name, a mounted polo player, a equestrian image, and other references to the sport as long as they were distinctive from the Ralph Lauren trademarks.
Life was peaceful until the USPA started making and distributing a men’s fragrance, with the Double Horseman Mark on the bottle and the word mark U.S. Polo Assn. The USPA sought a declaration that their use of the marks on their fragrances didn’t violate the former injunction and Ralph Lauren counterclaimed that the use constituted trademark infringement, unfair competition, trademark dilution, and a slew of common law violations.
Trademark infringement cases are extremely fact intensive. Courts look to eight factors to determine whether there has been a likelihood of confusion. These factors, knows as the Polaroid analysis, are “(1) the strength of [the] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant’s good faith in adopting its own mark, (7) the quality of defendant’s product, and (8) the sophistication of the buyers.”
The decision is over 60 pages long, so I’ll spare you the details (which you can read here), but after reviewing each factor in detail, the court determined that the USPA’s use of the Double Horseman Mark and its work mark created a strong likelihood of confusion with Ralph Lauren’s products when used in the context of men’s fragrances.
The court found that the USPA used the marks in bad faith, intending to capitalize on Ralph Lauren’s reputation and goodwill, so it held the USPA guilty of unfair competition claims as well.
The court applied the four-factored injunction standard articulated in eBay and Salinger (1. Likelihood of irreparable injury; 2. adequacy of remedies at law; 3. balance of hardships; and 4. the public interest) and granted Ralph Lauren permanent injunctive relief against the USPA.
To put the holding in some simple perspective: the US Polo Association decided to sell some perfume using its own validly registered trademarks. The Polo Ralph Lauren brand is so recognizable, that the USPA couldn’t use its own marks on fragrances. Among many other reasons, the court figured that the decision for the USPA to go into fragrances to profit from the Ralph Lauren reputation and that is not allowed.
The valid registration and administration of federal trademarks is a must for any fashion brand (or any brand at all for that matter). It is important to carefully determine what categories your marks are registered as and assess similar marks that may contest your use or registration.