October 17, 2014

Wyclef Escapes Infringement Claim Because "Actual Sounds" Not Copied

Pryor v. Jean, No. CV 13-02867, 2014 BL 283332 (C.D. Cal. Oct. 08, 2014) [Doc. 36].

Plaintiff, who claimed that his 1970's song "Bumpin' Bus Stop" was infringed by the defendants use of a sample in the Wyclef Jean song "Step Up" recorded in 2006, had his copyright infringement case dismissed.  The issue was that Plaintiff's song had appeared on two albums.  The song first appeared on a recording referred to as the "Gold Future" record.  Later, the Gold Future record was remastered, shortened in duration, and Plaintiff's band name was changed.  The latter record was referred to as the "Private Stock" record.  Years later, Defendants licensed the song from the Private Stock record.

The existence of two separate sound recordings (the Gold Future record and the Private Stock remaster) was important, as the substantive allegations at issue referred only to copyright to the Gold Future record, and not to the "Bumpin' Bus Stop" musical composition featured in both the Gold Future record and the Private Stock record.  The Court found: "Under 17 U.S.C. § 114(b), Plaintiffs have the exclusive right to duplicate, rearrange, or remix the 'actual sounds' of the Gold Future record. Defendants did not do anything with those 'actual sounds.'  Rather, Defendants used licensed 'actual sounds' from the Private Stock record.  Because the TAC's First and Second claims for relief are premised solely upon infringement of the Gold Future sound recording copyright, those claims are DISMISSED, with prejudice."

October 16, 2014

Former Band Member Enjoined From Using "Commodores" Mark For His New Band

Commodores Entertainment Corp. v. Thomas McClary, 6:14-cv-1335 (M.D. Fla. dated Oct. 9, 2014).

The Court granted the band "The Commodores" a preliminary injunction enjoining one of its founding members from performing under the name “The Commodores featuring Thomas McClary” or “The 2014 Commodores.”

First, the Court found that Plaintiff has demonstrated a substantial likelihood of success on its trademark infringement claim.  Defendant had left the band in 1984.  "When members of a band dispute ownership of a mark associated with the band, courts have found that members who remain active and associated with the band have better title to the mark than those who do not."  Continuing, "Defendant no longer has a valid claim to ownership over the Marks. Rather, the band members who remained after Defendant left in 1984 have prevailing ownership because they maintained continuity with the group and have been in a position to control the quality of services of the Marks associated with the band name. Defendant has not put forward any evidence to suggest that he maintained quality or control over the Marks associated with The Commodores after he left; rather, it was the other original band members who stayed with the group that continued to control the nature and quality of the Marks, went on to win a Grammy, and further expanded the band’s fan base and recognition."  (Internal cit. om.).

The Court also found that there is a likelihood that consumers would confuse the Grammy award winning band, ‘the Commodores,’ with the ‘The Commodores featuring Thomas McClary’ and/or ‘The 2014 Commodores'.  Due to the trademark infringement, there was a presumption of irreparable harm, and the Court found the balance of equities in plaintiff's favor.

SESAC Antitrust Settlement Submitted For Approval In Class Action

Meredith Corp. et al. v. SESAC, 1:09-cv-09177-PAE (S.D.N.Y. filed 10/15/14) [Doc. 174].

Plaintiffs filed an unopposed motion for approval of the parties' settlement of the class action antitrust claims.  In their motion, Plaintiffs summarize the first prong of the settlement as: "under the contemplated settlement, SESAC will be bound through 2035 by some of the same core conduct restrictions that constrain the anti-competitive potential, at least as it relates to their dealings with local stations, of the other two U.S. performance rights organizations ('PROs'), ASCAP and BMI, in their consent decrees with the Antitrust Division of the Department of Justice."  Notably, rather than a "rate court", the settlement provides that disputes should be submitted for binding arbitration.

Plaintiffs further summarize the second prong of the settlement as follows: "the proposed settlement will provide significant monetary relief to local stations.  SESAC has agreed to pay $58.5 million into a settlement fund. Those monies will be used to reimburse local stations for the claimed inflated license fees they have paid since 2008 as a result of the alleged anti-competitive conduct that was the subject of this lawsuit."  In addition, the monies will be used to reimburse for legal fees and costs.