December 31, 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
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:
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
"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
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
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 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
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
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 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
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
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
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
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
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
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
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
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.
"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
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
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
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
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
March 22, 2012
March 9, 2012
March 7, 2012
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 v BBDO Worldwide, Inc.|
|2012 NY Slip Op 01573|
|Decided on March 1, 2012|
|Appellate Division, First Department (New York)|
February 17, 2012
February 9, 2012
February 6, 2012
February 3, 2012
February 2, 2012
January 23, 2012
January 13, 2012
January 12, 2012
January 11, 2012
January 9, 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).