December 31, 2012

Sugarhill Sues Over "Uptown Anthem"

Sugarhill Music Publishing v. Warner/Chappel Music, Inc., No. 1:12-cv-09225-PAC (S.D.N.Y. complaint filed Dec. 19, 2012).

According to the complaint, plaintiff owns the copyright in the musical composition "That's The Joint" (1981), and defendants co-own the copyright in the musical composition "Uptown Anthem" (1991).  Plaintiffs allege in paragraph 7 of the complaint that defendants' song incorporates plaintiff's song by "using the three-syllable vocal phrase 'We gonna' and rhythmic pattern a total of 41 times, as a strong hook in the song."

December 19, 2012

Trademark Denied; YouTube Clip Not Proper Specimen

In re Rogowski, 2012 ILRC 3251 (TTAB Dec. 11, 2012).

The TTAB affirmed a refusal to register a mark because a screen shot of a YouTube webpage that showed a trademark applicant playing music did not clearly indicate that the video could be downloaded, and thus the specimen failed to show that the mark was “used in commerce.”

As found by the TTAB:


The submitted specimen, however, does not show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce. We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant's specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof. We view this failing as being similar to on-line retailing situations in which a webpage specimen fails to show a means for ordering the goods or service. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not directly provide a means for ordering applicant's goods); In re Genitope Corp. 78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes method to download, purchase or order the software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages have a ‘point of sale nature….’”) (citation omitted).

We further acknowledge applicant's intent and his assertion that viewers of his uploaded videos on YouTube may use third party software such as RealPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats. However, on the record before us, in the absence of a “download” link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods

Sex Offender Violated New Hampshire Law In Registering For MySpace

New Hampshire v. White, 2012 ILRC 3223, 2012 WL 6062701, 2012 BL 321269 (N.H. Dec. 7, 2012).

Not the typical posting to this blog, but interesting in light of MySpace's historical reputation as a social media platform for bands and musicians.  A New Hampshire criminal court dismissed an indictment against the defendant for violating a state statute (RSA 651-B:4-a) that requires registered sex offenders to report to law enforcement the creation of an “online identifier.”  The Supreme Court of New Hampshire reversed and remanded, holding that a MySpace account includes “user profile information,” which, therefore, is an “online identifier” subject to the reporting requirement of the statute (RSA 651-B:4-a).

December 18, 2012

Satellite Radio Royalty Rate Hike Reported

Sirius XM reports in an EDGAR filing:


"On December 14, 2012, the Copyright Royalty Board, or CRB, of the Library of Congress issued its determination regarding the royalty rate payable by us under the statutory license covering the performance of sound recordings over our satellite digital audio radio service, and the making of ephemeral (server) copies in support of such performances, for the five-year period starting January 1, 2013 and ending on
December 31, 2017. Under the terms of the CRB’s decision, we will pay a royalty of 9.0% of gross revenues, subject to certain exclusions, for 2013, 9.5% for 2014, 10.0% for 2015, 10.5% for 2016, and 11% for 2017. The rate for 2012 is 8.0%."

December 13, 2012

Toto's Royalty Suit Against Sony Limited By Magistrate

Toto, Inc. v. Sony Music Entertainment, No. 12-cv-1434-LAK-AJP (SDNY report and recommendation Dec. 11, 2012).

Plaintiff Toto brought the action against Sony Music based on a dispute over the amount of royalties owed under the parties' recording contract.  Sony moved to dismiss, and the motion was granted in part and denied in part. The primary issue in the case ise the royalty rate for music distributed through download and mastertone providers (e.g., iTunes, eMusic, Amazon.com and Verizon Wireless).

The magistrate judge found that Toto's first claim based on royalty accountings for the audit period should be dismissed as contractually time barred.  The parties agreement had a 3 year limitation period (i.e., claims had to be brought within 3 years from the royalty report).  Toto's argument that August 2010 and December 2011 documentation restarted the time limitation was unavailing.  However, the magistrate judge found that the portion of Toto's first claim based on royalty accountings for the post-audit period should not be dismissed with respect to the digital download issue.  In other words, Toto stated a claim for breach of the recording contract for the period within the contractually agreed to 3 year limitation period.

The magistrate judge also found that Toto failed to plead the elements of equitable estoppel.  The Court held that purposefully delaying an audit was not a ground for invoking equitable estoppel.  Also, participation in settlement negotiations was not a ground for invoking equitable estoppel.

The magistrate judge also found that Toto's claim for breach of the implied covenant of good faith and fair dealing should be dismissed.  The claim did not state a distinct cause of action based on a separate set of facts and was not independent of the breach of contract claim.  The good faith and fair dealing claim was duplicative of the breach of contract claim.


December 5, 2012

AM/FM Performance Royalties Discussed In Congress

Tamlin H. Bason, "Hearing on Internet Royalties Veers Into Discussion of AM/FM Loophole" (BNA 17 ECLR 2096).

BNA reports on a House subcommittee that held a hearing on a bill that would lower the royalty rates paid by services that offer internet radio, but that many lawmakers seemed more interested in dealing with the larger loophole: that AM and FM radio stations do not pay performance royalties.

November 27, 2012

Article re: Copyright Termination in 2013

See Ryan Davis, "Copyright Termination For '70s Hits Won't Spark Lawsuit Fever" (Law360, New York; Nov. 26, 2012).  (Link to article; registration required).

Article summary (first paragraph): "Musicians who recorded hit songs in the late 1970s will gain the right to reclaim ownership of their work starting in January under a 1978 copyright law provision, and while record labels are expected to fight to retain control of lucrative music, 2013 is unlikely to bring a flood of litigation, attorneys said."

The article concerns the reclamation of rights by authors that were licensed or transferred after 1978, pursuant to section 203 of the Copyright Act.  Generally, termination rights may be effected after 35 years from the grant.  Id.  Thirty-five years from 1978 is...2013!

Lawyers interviewed for the article predicted that there will be few actually litigated cases, and instead termination notices will serve as a jumping-off point for contract re-negotiations between artists and record labels.

November 16, 2012

Black Keys Settle Commercial Claims Against Pizza Hut and Home Depot

Auerbach v. The Home Depot, 12-cv-05386 (C.D. Cal. doc. 23 filed 11/13/2012); and Auerbach v. Pizza Hut, Inc., 12-cv-05385 (C.D. Cal. doc. 27 filed 11/9/12).

The Black Keys have settled their lawsuit against the Home Depot and Pizza Hut for the alleged unauthorized use of Black Keys songs in commercials.

October 12, 2012

$6.6 Million Copyright Infringement Judgment In Lyrics Website Case

Peermusic III v. Live Universe, Inc., No. 2:09-cv-06160 (C.D. Cal. filed Oct. 9, 2012) [Doc. 215].

Defendants operated song lyric websites that infringed copyrights held by a group of music publishers.  The company was run by the co-founder of MySpace Inc.  The Court granted a default judgment to plaintiffs and awarded statutory damages in the sum of $12,500 per each of the 528 songs shown to be infringed for a total of $6,600,000.  Plaintiffs were also awarded their attorneys fees.

Kudos to my former colleagues Paul Fakler and Ross Charap, who represented Plaintiffs.

September 21, 2012

Apple's Music Icon Can Not Be Trademarked

In Re Apple Inc., Serial No. 85019762 (TTAB mailed Sep. 18, 2012).


Apple sought to register a trademark for its music icon.  Registration was denied based on a pre-existing registration.  The refusal to register was affirmed by the TTAB.

"In comparing the marks within the above-noted legal parameters, the marks at issue are similar because they comprise a double musical note in an orange rectangle. The designs are not identical because applicant’s rectangle has rounded corners, the shades of orange are different, and applicant’s double musical note is ascending while note in the registered mark is descending. Nevertheless, we find that the basic similarities in the marks outweigh any specific differences that might be apparent upon a side-by-side comparison. The differences in the details of the respective depictions of the double musical notes and their background designs do not suffice to distinguish the marks in terms of their overall commercial impressions. Regardless of the differences which might be apparent in a side-by-side comparison, both marks depict a double musical note in an orange rectangle. Thus, when the marks are viewed at different times, the recollection of the first viewed mark will be a general impression that is devoid of the details that applicant argues sets its mark apart from the registered mark. What will be remembered is a musical note in an orange rectangle. The fact that the marks are not identical is less significant to our analysis than the basic similarities arising from the fact that both marks include the depiction of a double musical note in an orange rectangle."

September 13, 2012

Covenant Not To Sue Dooms Velvet Underground Copyright Claim Against Warhol

The Velvet Underground v. The Andy Warhol Foundation, No. 1:12-cv-00201-AJN (S.D.N.Y. filed Sept. 7, 2012) [Doc. 30].

The Velvet Underground sought a declaration that the Andy Warhol Foundation has no copyright in the iconic banana image used by the Velvet Underground and designed by Warhol.  The Warhol Foundation had covenanted not to sue the Velvet Underground for copyright infringement for the Velvet Underground's use of the banana image.  The Court held that the covenant not to sue eliminated any justiciable controversy between the parties over copyright in the design, and thus dismissed the Velvet Underground's declaratory judgment claim.  (The Velvet Underground's trademark claims were not the subject of the motion and were not dismissed).

In the decision, Judge Nathan does a thorough analysis of the Declaratory Judgment Act (28 U.S.C. 2201 et seq.), and specifically with respect to intellectual property cases.  Notably, the covenant not to sue was entered after the litigation had commenced, so the issue had been mooted by a subsequent development (the covenant).  The Court found that: "[I]n intellectual property cases, when a declaratory judgment plaintiff seeks a declaration that an asserted right is invalid or otherwise unenforceable and the declaratory judgment defendant provides the plaintiff with a covenant not to sue for infringement of that right, that covenant can extinguish any current or future case or controversy between the parties, and divests the district court of subject matter jurisdiction."  (Doc. 30 at pp. 6-7).

The Court held that the covenant at issue was broad, and then determined that there no longer was a "live, actual controversy."   First, the Court found that there was no real and substantial prospect that the Warhol Foundation's alleged copyright would impact the Velvet Underground's legal interests, and the Foundation's mere assertion of the right did not support a declaratory judgment claim.  The Covenant no only held litigation in abeyance, but it also vitiated any coercive force that the Foundation's alleged copyright might have had against the Velvet Underground.  Second, the Court held that the Declaratory Judgment Act could not be sued to test the validity of an affirmative defense that a plaintiff anticipates the defendant will assert, to wit: the Foundation claiming that its copyright shields it from trademark liability.  Third, the alleged adverse economic impact of the alleged copyright was not sufficiently immediate and real to warrant the issuance of a declaratory judgment.  "Without the 'how,' [the Velvet Underground] cannot show the controversy is 'real'; without the 'when', it cannot show the controversy is 'immediate'."  (Doc. 30, p. 14).  Fourth the right to an accounting under the Declaratory Judgment Act is not an independent cause of action, but is merely relief that may be granted.
 

August 22, 2012

Distribution, Not Only Copying, Sufficient For Copyright Claim

Marshall v. Huffman, No. 10-1665 (N.D. Cal. filed Aug. 20, 2010) [Doc. 133].

This action concerns a song recorded by Mariah Carey, and claims against Carey and a music executive for unauthorized exploitation of Plaintiff's song.  Defendant moved to dismiss, arguing that plaintiff failed adequately to allege his copyright claim, because plaintiff fails to allege that defendant “copied” plaintiff’s work, and because the allegation that Huffman “distributed” plaintiff’s copyrighted work without permission is insufficient to support the copyright infringement claim since it is devoid of supporting facts.  Defendant's was "not well taken."  The Court found that a claim for copyright infringement can be based on allegations of unauthorized distribution of a copyrighted work. See 17 U.S.C. § 106(3) (exclusive rights protected by Copyright Act include right to distribution of copyrighted work). The complaint adequately explained the facts supporting the improper distribution allegations: it alleged that defendant distributed without permission plaintiff’s song “Are You the One,” in violation of the Copyright Act.  Motion to dismiss DENIED.

August 21, 2012

Kanye Didn't Infringe, 7th Circuit

Peters v. West, No. 11-1708 (7th Cir. decided Aug. 20, 2012).

Plaintiff sued Kanye West, alleging that West's song "Stronger" infringed Plaintiff's song, also entitled "Stronger".  The hook to both songs draws from the aphorism coined by Friedrich Nietzsche: "what does not kill me, makes me stronger."  The District Court granted West's motion to dismiss, and the 7th Circuit affirms, agreeing that the two songs are not similar enough to support a finding of copyright infringement.

The court structured its analysis as (1) whether West had an actual opportunity to copy the original work (independent creations is a defense); and (2) whether the two works share enough unique features to give rise to a breach of the duty not to copy another's work.  The Court found that West had an opportunity to copy the work based on plaintiff's relationship with West's manager and collaborator.


"Once a plaintiff establishes that a defendant could have copied her work, she must separately prove—regardless of how good or restricted the opportunity was—that the allegedly infringing work is indeed a copy of her original."  The Court was not not persuaded that the similarities alleged by Plaintiff rose to the level of copyright infringement.  The Nietzsche aphorism is commonly used (indeed, was the subject of another Top 100 song by Kelly Clarkson at the time of oral argument of the appeal).  Next, the Copyright Act does not protect rhyme pattern, a method of expression, but instead protects only the actual expression.  Lastly, references in both songs to the model Kate Moss were entirely different.

"Vince P’s theory is that the combination of the songs’ similar hooks, their shared title, and their references to Kate Moss would permit a finding of infringement. But, as we have discussed, in the end we see only two songs that rhyme similar words, draw from a commonplace maxim, and analogize feminine beauty to a specific successful model. These songs are separated by much more than “small cosmetic differences,” JCW, 482 F.3d at 916; rather, they share only small cosmetic similarities. This means that Vince P’s claim for copyright infringement fails as a matter of law. The judgment of the district court is AFFIRMED."

August 13, 2012

McClain (Executors of Estate of Michael J. Jackson) v. Mann, No. 2:11-cv-00584 (C.D. Cal. filed Aug. 10, 2012) [Doc. 132].


Plaintiffs allege that Defendants are commercially exploiting without authorization intellectual property created by the late Michael Jackson (“Jackson”) and now owned by Plaintiffs.  Defendants argue, to the contrary, that they obtained the rights to use this intellectual property at a bankruptcy sale involving members of Jackson’s family. Defendants also argue that some of Plaintiffs’ claims are barred by res judicata, and that Plaintiffs have not met their summary judgment burden on other claims.


The court finds that none of these rights were transferred through the bankruptcy sale.  "[N]one of the facts surrounding the sale of Debtors’ personal property from a storage facility indicate a transfer of any intellectual property rights".


The court grants summary judgment to Plaintiffs as to each of Defendants’ affirmative defenses. The court also grants summary judgment to Plaintiffs on their claims for: 1) copyright infringement as to the “This Is It” key art, “Destiny” song, and “Thriller” material; 2) false designation of origin for Defendants’ use of Jackson’s likeness performing the “Smooth Criminal Lean”; 3) misappropriation of likeness for Defendants’ exploitation of this and other images of Jackson; 4) unfair competition based on this alleged unauthorized use; 5) cybersquatting and cyber piracy for Defendants’ exploitation of Jackson’s name in their domain names;
6) an accounting to reveal Defendants’ profits from the unauthorized use; 7) a permanent injunction against the unauthorized use; and 8) declaratory relief as to ownership of the intellectual property at issue.


August 3, 2012

Sanctions Against Music Company For Frivolous Case

Arabesque Recordings, LLC v. Capacity, LLC, No. 650277/2006 (Sup. Ct., N.Y. Co. Commercial Division, July 31, 2012) (Bransten, J.S.C.)  (decision here).

Plaintiff music distributor/seller sued defendant warehouse and distribution center for over $2 million for breach of the warehousing agreement.  A bench trial was had.  After approximately 1 hour of testimony, plaintiff moved to dismiss its own case with prejudice on the ground that it lacked any evidence to support its claim.  The court granted the motion, and granted defendant leave to move for sanctions.  Defendant moved for sanctions equaling its legal fees and costs.  The court found that plaintiff's witness's testimony was belied by his own deposition testimony and undisputed documentary evidence, and that continuation of the case was frivolous.  The court sanctioned plaintiff for defendant's legal fees and costs.

July 26, 2012

Platters Injunction


Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 2:12-cv-00560 (D. Nev. July 24, 2012) [Doc. 43].

In this case, the assignee of founding band member Herb Reed asks the Court to tell Defendants – who promote an unlicensed show featuring a group called The Platters – that “It Isn't Right.”  The Court granted Plaintiff's motion for a preliminary injunction enjoining defendants and their agents from use of the mark “The Platters,” and any equivalent or phonetically similar names or marks, in connection with any vocal group in any advertisements, promotional marketing, or other materials, with two narrow exceptions.  First, Defendants could use the mark “The Platters” in connection with the names that included the words "tribute to" or "salute to" the Platters.  Second, defendants could use the mark “The Platters” in any other manner with Plaintiff's permission.

July 18, 2012

LIVE Former Singer Sued For Use Of Band Name

Action Front Unlimited Inc. v. Edward KowalczykNo. 12-cv-5483 (SDNY complaint filed July 17, 2012).


Plaintiff furnishes the services of the rock band "Live" and owns numerous trademarks in the name LIVE.  Plaintiff claims that defendant, the former lead singer of Live, is committing trademark infringement by promoting and advertising his musical performances under the name ED KOWALCZYK OF LIVE.

July 16, 2012

Pre-1972 Recordings Subject To DMCA

UMG Recordings, Inc. v. Escape Media Group, Inc., No. 100152/2010 (Sup. Ct., N.Y. Co. July 10, 2012) (Kapnick, J.S.C.).

New York State Court holds that the "safe harbor" provisions of the DMCA extend to common law copyright claims relating to pre-1972 recordings.

Plaintiff moved to dismiss defendant's "safe harbor" affirmative defense under the DMCA [17 U.S.C. 512(c)(1)].  Section 301(c) of the Copyright Act makes clear that the copyrights of pre-1972 recordings are not protected by the federal Copyright Act, and the Court analyzed whether the DMCA may provide a defense or "safe harbor" to internet service providers facing New York State common law copyright infringement claims (as opposed to claims under the federal act).  The Court observed that only one court has considered the issue (Capitol Records, Inc. v. MP3Tunes, 821 F. Supp.2d 627, 640 (SDNY 2011), and concluded that "there is no indication in the text of the DMCA that Congress intended to limit the reach of the safe harbors provided by the statute to just post-1972 recordings."  In response to a report by the Register of Copyrights that "it is for the Courts to interpret the applicable statute and decide the issues raise by this motion.  This Court is not attempting to extend the Copyright Act to pre-1972 recordings, but, nonetheless, does find, based on the relevant language of the statutes...that the safe harbor provisions codified by section 512(c)(1) of the DMCA is applicable to pre-1972 recordings."  Accordingly, plaintiff's motion to dismiss the DMCA affirmative defense was denied.

However, the Court did dismiss defendant's affirmative defense based on the Communications Decency Act of 1996 (the "CDA") [47 U.S.C. 230].  Lastly, the Court dismissed defendant's counter-claim for violation of a New York State anti-trust statute, the "Donnelly Act" (NY General Business Law 340), but denied plaintiff's motion to dismiss the counter-claims for tortious interference with contract and business relations.

99 Problems + The Law

Caleb Mason, JAY-Z’S 99 PROBLEMS, VERSE 2: A CLOSE READING WITH FOURTH AMENDMENT GUIDANCE FOR COPS AND PERPS, Saint Louis Univ. Law J. (Vol. 56, pp. 567-585) (link to article).


"ABSTRACT: This is a line-by-line analysis of the second verse of 99 Problems by Jay-Z, from the perspective of a criminal procedure professor. It’s intended as a resource for law students and teachers, and for anyone who’s interested in what pop culture gets right about criminal justice, and what it gets wrong."

June 25, 2012

Black Keys Sue Over Song In Commercials

Daniel Auerbach et al. v. The Home Depot, Inc., No. 2:12-cv-05386 (C.D. Cal. filed 06/21/12) [Doc.1]

The Black Keys sued the Home Depot, and in a related action Pizza Hut, for the alleged unauthorized use of the single "Lonely Boy" (released 2011) in commercials.  The sole cause of action is for copyright infringement.

June 14, 2012

2d Cir Affirms Adjustable Carve Out Rates For Performance Rights Licenses

BMI v. DMX, Inc., Docket Nos. 10-3429-cv and 11-127-cv (2d Cir. decided June 13, 2012) (decision).

The 2d Circuit holds that the consent decrees with the performing rights organizations permits blanket licenses subject to carve-outs to account for direct licensing by the music user.  Then, the 2d Circuit held that the rate-court (SDNY) set reasonable rates.

May 24, 2012

ASCAP Royalty For Mobile Devices Affirmed By 2d Cir.

ASCAP v. MobiTV et al., Docket Nos. 10-3161-cv(L) (2d Cir. May 22, 2012).


This  appeal  concerns determination  of  the  proper  royalty  that ASCAP is  entitled to  receive  for  a  blanket  public performance license for music in the ASCAP repertory that is embodied in  television  and  radio  content  to  be  delivered  to  viewers  and listeners using mobile telephones.

When the parties could not agree on a price for the performance rights to the music component of Mobi’s offerings, ASCAP sought a reasonable rate in the District Court for the Southern District of New York, acting as a rate court pursuant to  a  consent  decree.  Following  a  bench  trial,  the  District  Court
(Denise  Cote,  District  Judge)  issued  a  judgment  on  July  7,  2010, establishing various royalty rates, depending on the nature of the programming, and designating the revenue bases to which those rates apply. See  In re Application  of MobiTV, Inc.,  712  F. Supp.  2d  206 (S.D.N.Y.  2010).  ASCAP  appealed,  contending  that  the District Court’s rate formulation should have been based on the retail
revenues  received  by  the  wireless  carriers  from  sales  to  their customers, rather than the content providers’ wholesale revenues paid by Mobi.  The Second Circuit disagreed with ASCAP and AFFIRMED.

April 6, 2012

2d Cir Decision On DMCA Safe Harbor In Viacom v Youtube

Viacom v. YouTube (2d Cir. Apr. 5, 2012). Decision. Not a "music" case, but extremely important decision that will impact future infringement cases.

This appeal required the Second Circuit to clarify the contours of the “safe harbor” provision of the Digital Millennium Copyright Act (DMCA) that limits the liability of online service providers for copyright infringement that occurs “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c). The District Court held that the defendants were entitled to DMCA safe harbor protection primarily because they had insufficient notice of the particular infringements in suit. The Second Circuit held:


We conclude that the District Court correctly held that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. We further hold that the District Court erred by interpreting the “right and ability to control” provision to require “item-specific” knowledge. Finally, we affirm the District Court’s holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs “by reason of” user storage; we remand for further fact-finding with respect to a fourth software function.


March 30, 2012

Rick Ross Name Claim Time Barred

Ross v. William Leonard Roberts II, No. BC450511 (Superior Court for the State of California, County of Los Angeles).

It is reported that a lawsuit accusing rapper Rick Ross, his label and others of misappropriating the name and identity of former drug kingpin "Freeway" Ricky Ross, has been dismissed based on an expired statute of limitations. The Judge ruled that the former drug trafficker's claims were barred by the two-year statute of limitations under California's single publication rule and the doctrine of laches. Per the Court, the rapper's first hit single received significant radio play beginning in 2005 and alerted plaintiff, who was in prison at the time, that his name was being used commercially.

March 22, 2012

Andre 3000 Of Outkast Escapes Cartoon Treatment Case

McGee v. Andre Benjamin 3000, 1:08-cv-11818-DPW (D. Mass. Mar. 20, 2012) [Doc. 126].

This copyright action arises out of a treatment for an animated television series developed by Plaintiff Timothy McGee and unsuccessfully pitched to Defendant The Cartoon Network (“Cartoon Network”) in 1997. Nearly ten years later, Cartoon Network aired Class of 3000, which was co-created and co-produced by Thomas Lynch and Defendant AndrĂ© Benjamin. Alleging that Benjamin, Cartoon Network, and its parent company, Defendant Turner Broadcasting Systems, Inc. (“TBS”), copied his cartoon treatment, McGee filed suit against the defendants for copyright infringement and various state law claims. Defendants Cartoon Network and TBS have moved to dismiss, and McGee has filed several motions to amend the complaint and two motions to enforce an earlier discovery order. The court granted the defendants’ motion to dismiss and deny McGee’s motions

March 9, 2012

Settlement Reached In Class Action Over Digital Royalties

Shropshire v. Sony Music, 1:07-cv-02394 (S.D.N.Y. filed 03/07/12) [Doc. 120].

Record label Sony Music agreed to pay nearly $8 million to settle a proposed class action brought by Elmo & Patsy and members of The Youngbloods in which Plaintiffs alleged that the label failed to pay artists proper royalties on sales of digital recordings.

March 7, 2012

Standing Still Lacking Under 1909 Act In "Big Pimpin'" Case

Nafal v. Jay-Z, et al, 11 cv 06238 (C.D. Cal. Mar 2, 2012).

Plaintiff argued that because was the exclusive license of a song sampled in the Jay-Z song "Big Pimpin'", he had standing to sue Defendants for infringement. The court held that Plaintiff's standing had to be evaluated under the 1909 Copyright Act (due to the copyright date of the sampled song). Even if Plaintiff were deemed a co-exclusive licensee, the 1909 Act required Plaintiff to join the author's heirs in the action, who were the copyright owners. He did not do so, and accordingly, lacked standing.

Rap Lyrics Properly Admitted At Criminal Trial

People v. Avery Green, NYLJ 1202544434567 (2d Dept Feb. 28, 2012).

After hearing a recording of a rap performance proffered by the People, the County Court admitted into evidence a transcript of lyrics from that performance, which had been written by the defendant or members of the gang with which the defendant was affiliated, and described crimes that the gang members committed or were going to commit. The Appellate Division held that admission of this evidence did not warrant reversal.

To the extent that the defendant argues that the admission into evidence of the law enforcement witnesses' testimony was "prejudicial," any such prejudice must be balanced against the relevance of the testimony. The lyrics themselves were relevant to the issue of the defendant's consciousness of guilt (see People v. Wallace, 59 AD3d 1069, 1070), and both the lyrics and the testimony of the law enforcement witnesses concerning their understanding of the meaning of those lyrics were relevant to defendant's knowledge and intent (see United States v. Foster, 939 F2d 445, 455). Similarly, the testimony concerning the structure of the gang to which the defendant belonged, as well as his place in the gang hierarchy, was relevant to the context of the lyrics composed by the defendant and those found in his bedroom, and explained the relationship between the defendant and his coconspirators, along with their motives and intent (see People v. Cherry, 46 AD3d 1234, 1237; People v. Faccio, 33 AD3d 1041, 1042). Under the circumstances of this case, the relevance of this challenged evidence more than outweighed the potential prejudice to the defendant and, hence, the evidence was properly admitted over any objection based on prejudice (see People v. Russo, 81 AD3d 666, 667-668)

March 2, 2012

Helm Claim Has No "Weight"

Helm v BBDO Worldwide, Inc.
2012 NY Slip Op 01573
Decided on March 1, 2012
Appellate Division, First Department (New York)
Plaintiff's claim under New York Civil Rights Law § 51, which prohibits the use of a person's "name, portrait, picture or voice" for advertising or trade purposes without written consent, was properly dismissed. By contract, plaintiff broadly granted his record company the "exclusive and perpetual right to use and control" plaintiff's sound recordings and the "performances embodied therein," which included the recording that was licenced to and used by defendant in a third-party television commercial. Although plaintiff claims that he never gave written consent for the use of his voice, as it is embodied in that recording, for the instant advertising purpose, he unambiguously authorized defendant to license the recording in the contract (see Greenfield v Philles Records, 98 NY2d 562, 569 [2002]).

February 17, 2012

Aussie Court: No Extra Royalties From Radios Streaming On Web

Phonographic Performance Company of Australia Ltd v Commercial Radio Australia Limited
[Feb. 15, 2012] FCA 93.

The issue before the Australia Federal Court was whether the scope of the non-exclusive licence of the right to broadcast certain sound recordings granted by a copyright collection agency to radio stations included the right to play those recordings in radio programs transmitted by FM broadcast as a simulcast with transmission of the same program via the Internet.

Phonographic Performance Company of Australia Ltd (PPCA) is a copyright collecting society representing the interests of copyright owners and recording artists in relation to the broadcast, communication to the public and public performance of recorded music and music videos in Australia. It offers non-exclusive licences of the copyright in a large repertoire of commercially released sound recordings for particular purposes. Commercial Radio Australia Limited (formerly called “The Federation of Australian Radio Broadcasters Limited”) (CRA) is an incorporated industry body representing the interests of commercial radio broadcasters in Australia who make use of such sound recordings in their day-to-day commercial activities.

By an umbrella Licence Agreement between PPCA and CRA (the Industry Agreement), PPCA agreed to grant to each member of CRA a nonexclusive licence of “… the Broadcasting Right in the PPCA Sound Recordings” for a certain period. Some radio stations which are members of
CRA have streamed their radio programs on the Internet. This streaming service involves the
simultaneous transmission of radio programs using the broadcasting services bands and the
Internet. The content of the radio programs made available over the radio and via the Internet
is the same. PPCA contends that, as a result of the the interplay between certain provisions of the Australian broadcasting and copyright law, the licence which PPCA agreed to grant to members of CRA did not include the right to make available to the public PPCA Sound Recordings in radio programs delivered via the Internet at the same time as making those recordings available to the public by means of a radio broadcast. CRA argues, on the other hand, that the existing licence does include that right.

The Court held that the simulcast transmission of the same radio program via the FM waves and the Internet is also a “broadcast” within the current definition of that term in s 10(1) of the Copyright Act and, for that reason, is within the scope of the licence which PPCA agreed to grant to the members of CRA and which it did grant from time to time to members of CRA upon the terms and conditions set out in the Member Agreement. PPCA failed to make out its case.

February 9, 2012

Common-Law Copyright Claim Time Barred; No Breach or Unjust Enrichment

Goeke v. Naxos of America, Inc., 650606/09, NYLJ 1202541596753, at *1 (Sup., NY, dec. Jan. 27, 2012) (Fried, J).

Plaintiff, a world-renowned lyric tenor, alleged that Defendants have been engaged in the unauthorized distribution and sale of five audio and audiovisual recordings of live opera and choral performances, in which plaintiff appeared as a featured artist. Plaintiff's cause of action for breach of contract against the defendant record distributor was dismissed because the label was not party to any contract with plaintiff. Plaintiff's causes of action for unjust enrichment against the defendant record distributor also was dismissed because there was no connection or relationship between the parties. Plaintiff's cause of action for common-law copyright infringement under New York law was dismissed because " the only judicially recognized relief in New York for the violation of such right are the protections afforded against the commercial misappropriation of a person's name, picture, or voice that are provided by Civil Rights Law §§50 and 51." This claim was dismissed under the applicable one-year limitations period. Additionally, Plaintiff's common law claim for unjust enrichment, based on the unauthorized appropriation of a name, picture, or voice, was subsumed under the time-barred Civil Rights Law §§50 and 51 claims.

February 6, 2012

Vegas Singer Enjoined From Using "Platters" Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. filed Feb. 1, 2012)[Doc. 26].

The Court entered a preliminary injunction enjoining a Las Vegas singer from using the name of 1950s vocal group The Platters. The decision traced the long-history of litigation between members of the band and their use of the band name, and then underwent the preliminary injunction standard for trademark infringement. Plaintiff showed a likelihood of success on its ownership in the mark, and that it acquired rights to the mark through prior use. Additionally, plaintiff established a likelihood of success on its claim that “The Platters featuring
Monroe Powell” is confusingly similar to “The Platters.”

February 3, 2012

Google's Position On Music On The Cloud

Capitol Records, LLC v. Redigi, Inc., No. 1:12-cv-00095 (SDNY filed 2/1/12) [Doc. 24].

Google sought permission to file an amicus brief. The Court, however, denied the request. Nonetheless, Google's letter provides insight into its position on cloud computing, or "space shifting".


Google Letter

February 2, 2012

Lyricist's Suit Against Video Game Developer Survives

Greer v. Electronic Arts, Inc., No. 10-cv-3601 (N.D. Cal. order filed Feb. 1, 2012) [Doc. 96].

In this copyright infringement action, plaintiff contended that defendant improperly used a
sound recording and the lyrics of a song by incorporating them into a widely-distributed videogame. Defendant moved for summary judgment on three independent grounds. Although two of defendant’s three arguments presented close calls, triable issues of fact existed that precluded summary judgment, and the motion was denied.

Facts: Plaintiff was a member of a band that registered a copyright relating to an album the band had recorded, which included the song at issue. Plaintiff subsequently filed a correction to the registration to clarify that he claimed sole copyright to the lyrics of the song. One of Plaintiff's band mates was employed by a video game developer, and was working to create a soundtrack for a video game that was being was developed. The band mate chose to include the song as part of the soundtrack for the game. The band mate and two other band members submitted declarations stating that all of the band members executed a written license agreement giving the developer the right to use the song in the game in exchange for one dollar and acknowledgement in the on-screen credits of the game. No signed copy of such a license agreement was located, and Plaintiff denied ever being asked to sign a license agreement, and alleges that he did not become aware that the song had been incorporated into the game until 2009.

Discussion: First, the court addressed issues with the registration of the album containing the song as a "PA" (performing arts), in contrast to registration on a form "SR" (sound recording). While Form SR may be used to register both the underlying composition and the
sound recording if separate registrations are not necessary or desired, nothing on Form PA permits it to be used to register a sound recording. Thus, defendant was correct that the band’s recorded performance of the song that was used in the game was never registered. That fact, however, wasnot fatal to plaintiff's claims, because plaintiff's complaint specifically identified by registration number the copyrighted work that plaintiff alleged had been unlawfully copied. While the complaint also repeatedly asserted the erroneous legal conclusion that the registration was of the sound recording (as opposed to the underlying musical composition) the facts alleged were sufficient to state a claim for infringement of the musical composition. There was no dispute that the band's performance of the song incorporated in the game was a performance of the underlying composition.

Second, the Court analyzed the competing arguments about the existence of a license. The Court concluded that the record did not permit a conclusion on summary judgment that the license agreement was ever signed, either in the unsigned form of the document defendant hadsubmitted, or in any form. While the recollections on both sides were vague, they were in direct conflict.

Third, the Court analyzed the defense of laches. Defendant made a compelling showing that this was a case in which laches may ultimately apply to bar at least some portion of plaintiff's claims. Among other things, the evidentiary prejudice was manifest in the witnesses’ fading memories and the uncertainty in the documentary record as to whether the license agreement was ever signed. The critical question, however, was when plaintiff knew or should have known that the song had been incorporated into the game. Plaintiff's testimony that he did not learn of the song’s use in the game until 2009 was sufficient to create a triable issue of fact as to his actual knowledge. If the trier of fact accepts the testimony that the possibility of using the song in the game was discussed at length prior to plaintiff's departure from the band, he more likely can be held to a duty of some inquiry, even assuming he never saw or signed the license agreement. Defendant had not shown, however, that undisputed facts compel a finding that plaintiff was on constructive notice as early as 1995, or at any particular time thereafter. Finally, defendant had not established that laches necessarily would bar plaintiff from seeking injunctive relief against any ongoing infringement, even assuming it ultimately bars some or all of his claims for past damages.

January 23, 2012

80s Rock Band Argues Copyright Claim Is Time Barred

McCarthy et al. v. Johannesson et al., No. 1:11-cv-07422 (N.D. Ill. filed Jan. 17, 2012) [Doc. 28].

In moving to dismiss pursuant to Rule 12(b)(6), defendants-- members of the 80s rock band "Poison" -- argue that because over 20-25 years have passed since plaintiffs claim that defendants violated plaintiffs' supposed copyright in four of plaintiffs' songs, the action is "spurious and hopelessly timebarred". Additionally, defendants argued that several of the claims are barred because plaintiffs do no have copyright registrations for the songs at issue.

January 13, 2012

9th Cir. Affirms Public Performance Liability Against Restaurant

Range Road Music, Inc. v. East Coast Foods, Inc., No. 10-55691 (9th Cir. filed Jan. 12, 2012).

The 9th Circuit affirmed the district court's grant of summary judgment and legal fees in favor of plaintiffs (ASCAP) against defendant (restaurant/lounge). Defendant was vicariously liable for copyright infringement related to the public performance, both by a live band and by a CD, of copyrighted songs. Plaintiff's proof was an investigative report by a visitor to the premises. The report did not need to be by a certified expert because "identifying popular songs does not require 'scientific, technical, or other specialized knowledge'.” The Court rejected defendant's argument that a showing of substantial similarity was required for a public performance case. The Court properly awarded attorney's fees to Plaintiff.

January 12, 2012

Labels Denied Interlocutory Appeal In MP3Tunes Case

Capitol Records, Inc. et al. v. MP3Tunes, LLC et al., No. 07-9931 (S.D.N.Y. filed Jan. 9, 2012) [Doc. 277].

Plaintiffs (record companies and music publishers) asked the Court to certify an interlocutory appeal of the Amended Memorandum & Order dated October 25, 2011 ("October 25,2011 Memorandum & Order") pursuant to 28 U.S.C. § 1292(b). Plaintiffs sought interlocutory appeal on whether, (i) the DMCA safe harbors apply to sound recordings fixed before February 15, 1972, (ii) a repeat infringer policy can be reasonably implemented by terminating only "blatant" infringers, and (iii) red flag knowledge of infringement can be established through sources other than takedown notices. The Court denied Plaintiffs' request.

CA Statute Of Limitations Bars Singer's Malpractice Claim

Basilotta v. Warshavsky, 6508 115524/09, NYLJ 1202538059721, at *1 (1st Dept, Jan. 10, 2012).

Reversing the trial court's decision denying defendant's motion to dismiss, the Appellate Division applied California's one-year statute of limitations for legal malpractice to dismiss Plaintiff's complaint against her former lawyers. It appears that plaintiff had a recording contract with a record label, that label was involuntarily liquidated, and the lawyers allegedly neglected plaintiff's case against the label.

January 11, 2012

Bob Marley Heirs Settle With UMG

Fifty-Six Hope Road Music Ltd. v. UMG Recordings, Inc., Index. No. 08-cv-6143 (SDNY filed Jan. 5, 2012) [Doc. 175].

The Court so-ordered the parties stipulation of dismissal without prejudice.

January 9, 2012

ReDigi Sued For Copyright Infringement

Capital Records Inc. v. ReDigi Inc., No. 1:12-cv-00095 (SDNY filed 1/6/2012).

Plaintiff alleges copyright infringement arising from defendant's contributory, vicarious, and inducement of the willful and systemic use of plaintiff's original sound recordings on defendant's "ReDigi" music service. Defendant is an internet business whose stated purpose is to help consumers buy and sell "used" digital music files. Plaintiff seeks $150,000 per infringement (maximum statutory damages for willful infringement).