April 8, 2008

Trademark Issue in Usher Copyright Suit?

Straughter v. Raymond, No. 08 cv 2170-CAS-CWX (C.D.Cal. filed Apr. 1st, 2008) is a copyright infringement action brought pro se by the author of a composition against the performer Usher arising out of Usher's sound recording "Burn" appearing on the album "Confessions". It appears that plaintiff's composition was previously performed with authorization by an earlier artist, and that Usher sampled that recording. It is not clear whether the label and/or publisher for the earlier recording of the composition are parties to the suit.

What grabbed OTCS attention to this case was plaintiff's third claim under the Lanham Act:

33. Mr. Straughter is a highly successful and well known Grammy-winning artist, composer, producer and performer. He has established a reputation at the top of his field and achieved world wide renown, expending substantial amounts of time and money to maintain the goodwill he has established.

34. Defendants and their representatives have distributed and provided goods and services in interstate commerce in connection with Plaintiff’s goodwill, notoriety and ownership interest in the copyright and Defendants have realized substantial income from the provision and sale of such goods and services.

35. Defendant’s use of Plaintiff’s sound recording and/or his copyrighted song in the performance of “Burn” is likely to cause confusion, mistake or deception by misleading consumers and the trade into believing that Plaintiff licensed or otherwise authorized the use of their performance, or that the “Burn” composition and Confessions Album associated with or otherwise endorsed by Plaintiff. Defendants conduct is in willful and deliberate violation of section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a) (1) (A) and highly damaging to Plaintiff’s reputation and specific financial entitlements.

36. Defendants have profited and continue to profit from their unlawful conduct and will, unless restrained, further impair Plaintiff’s goodwill and reputation, and Plaintiff will suffer irreparable injury which cannot be adequately calculated or compensated solely by money damages.

Reading this count reminded us of the recent holding in Contractual Obligations Productions LLC v. AMC Networks, Inc., No. 04 cv 2867, 4/7/08 NYLJ "Decision of Interest" (S.D.N.Y. decided Mar. 25, 2008) which cited Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) for the proposition that the Lanham Act does not apply to claims arising out of failure to credit or attribute the origin of a creative work.

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