Article re Registering Multiple Works In A Single Copyright Registration

Marc Jacobson and Marc Pellegrino, "Registering Multiple Musical Works in a Single Copyright Registration", NYSBA Entertainment, Arts and Sports Law Journal, Vol. 24 No. 2, pp. 13-16 (Summer 2013).

This article clarifies:

"...if music is being commercially released exclusively via sale of a complete album, one is only entitled to one statutory damage award for any infringements therein.  If, on the other hand, the individual songs on that album, which were registered as part of the single application, are also 'issued' individually, those individually released songs gain full statutory damage protection."

The article was a reply to an earlier published article wherein the author had suggested that a single copyright application for more than one work can retain all the legal remedies afforded by the Copyright Act while saving money by avoiding multiple registration fees. Citing Bryant v. Media Rights Prods., Inc., 603 F.3d 135 (2d Cir. 2010), and Arista Records LLC v. Lime Group LLC, 2011 WL 1311771 (S.D.N.Y. 2011), the article suggests that traditional registration of each track and each song may still provide the best possible protection for sound recordings and musical compositions.

Green Day's Use Of Illustration During Concert Was Fair Use, But Attorney's Fees Denied

Seltzer v. Green Day, Inc. et al., No. 11-56573 [D.C. No. 2:10-cv-02103] (9th Cir. Aug. 7, 2013).

The 9th Circuits affirmed summary judgment in favor of the defendants, but vacated the attorney's fees award, in an artist's action alleging violations of the Copyright Act and the Lanham Act relating to the rock band Green Day's unauthorized use of an illustration ("Scream Icon") in the video backdrop of its stage show.

The Court found that use of the illustration in the video backdrop was a fair use under the Copyright Act: it was transformative, the illustration was a widely disseminated work of street art, the illustration was not meaningfully divisible, and the video backdrop did not affect the value of the illustration.  As to the trademark claims, the artist failed to establish any trademark rights.  In vacating the attorney's fees award under the Copyright Act, the Court found that even though defendant was successful on their fair use defense, the plaintiff did not act objectively unreasonably ("there is simply no reason to believe that Seltzer should have known from the outset that his chances of success in this case were slim to none.").

English Court Finds TopShop's Sale Of Rihanna T-Shirt Without Her Approval Was "Passing Off"

Robyn Rihanna Fenty et al. v. Arcardia Group Brands Limited (t/a Topshop) et al.; No. HC12F01378, [2013] EWHC 2310 (Ch. July 31, 2013).

This case was before the English High Court of Chancery in London.  In March 2012, the retailer Topshop started selling a t-shirt with an image of the pop star Rihanna on it.  Topshop had a license from the photographer, but not from Rihanna who contended that sale of the t-shirts without her permission infringed her rights.

The court found it "important to state at the outset that this case is not concerned with so called 'image rights'.  Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image."  Instead, "this case is concerned with passing off."  The burden was on Rihanna to establish that she has a goodwill and reputation amongst relevant members of the public, the conduct complained of was likely to deceive those members of the public into buying the product because they think it is authorized by her, and that misrepresentation damaged her goodwill.  For passing off to succeed, there must be a misrepresentation about trade origin.

The Court concluded that Rihanna "was and is regarded as a style icon by many people..." and that she had ample goodwill to succeed in a passing off action.  The scope of her goodwill was not only as a music artist but also in the world of fashion.

"The real issue in this case" was misrepresentation.  The Court concluded that a misrepresentation was made, and held that "it is a matter for the claimants and not Topshop to choose what garments the public think are endorsed by her."  Finding in favor of Rihanna.

Sound Recording Performance Royalty Proposed

House democrat Rep. Mel Watt (North Carolina) announced a plan to reintroduce legislation requiring radio stations to pay performance royalties for sound recordings (not just for compositions).  The last time the issue was proposed, in February 2009 (H.R. 848, the Performance Rights Act), the bill failed to pass the House.  The National Association of Broadcasters issued a statement strongly opposing a "new performance tax."

Viacom Denied Attorney's Fees in TM Dispute With Gibson Guitars

Gibson Guitar Corp. v. Viacom Inc'l, Inc., No. 12-cv-10870 (C.D. Cal. July 18, 2013) [Doc. 51].

Plaintiff owns a trademark for the "FLYING V" mark and sued Viacom for trademark infringement relating to SpongeBob Square Pants "alleging that Flying V SpongeBob SquarePants ukuleles have been advertised and distributed without Gibson's authorization".  The Court previously granted Viacom's motion to dismiss for failure to state a claim, and Viacom moved for attorney's fees under the Lanham Act.  The Court denied the motion.  "The court finds that Gibson's case against Viacom is not 'exceptional' in the sense of the Lanham Act. The fact that allegations are insufficient to survive a motion to dismiss does not in itself render a complaint groundless under Lanham Act."

Trademark Claim Over Band Name Dismissed For Lack Of Standing And Failure To State A Claim

Newsboys v. Warner Bros. Records Inc. et al., No. 3:12-cv-0678 (M.D. Tenn. - Nashville filed July 11, 2013) [Doc. 41].

Plaintiffs filed suit under the Lanham Act against defendants -- music distributors and the band New Boyz -- alleging trademark infringement of the mark NEWSBOYS.  The court concluded that the plaintiffs Newsboys Inc. lacked standing to pursue its claims because the other plaintiff, Wesley Campbell, is the sole owner of the Newboys trademark.  Also, the Court concluded that because Campbell's registered trademark is limited to "live musical performances of a religious nature rendered by a group," he had failed to allege plausible facts of the likelihood of confusion of the two groups.

7th Cir. Affirms Dismissal of "Nikita"/"Natasha" Suit Against Elton John

Hobbs v. Elton John, No. 12-3652 (7th Cir. July 17, 2013).

Plaintiff composed a song entitled “Natasha” that was inspired by a brief love affair he had with a Russian waitress.  Plaintiff tried to publish  his song, but was unsuccessful. A few years later, Elton John and Bernie Taupin released a song entitled “Nikita” through a publishing company to which Plaintiff had sent a copy of “Natasha.” Believing that “Nikita” was based upon “Natasha,” Plaintiff eventually demanded compensation
from John and Taupin, and ultimately filed suit asserting a copyright infringement claim and two related state law claims. The defendants moved to dismiss Plaintiff's complaint for failure to state a claim, and the district court granted the defendants’ motion.  The 7th Circuit affirmed.

The Court held that Plaintiff failed to state a claim for copyright infringement because, even when the allegedly similar elements between the songs are considered in combination, the songs are not substantially similar.  Defendants conceded that Plaintiff owned a valid copyright in the song and that Defendants had access to it.  "Thus, the defendants can only prevail on their motion to dismiss if 'Natasha' and 'Nikita'
are not 'substantially similar' as a matter of law. That is, if as a matter of law 'Natasha' and 'Nikita' do not 'share enough unique features to give rise to a breach of the duty not to copy another’s work'."  The Court found that Plaintiff's argument "flounders on two well-established principles of copyright law."  First, that the Copyright Act does not protect general ideas, but only the particular expression of an idea.  And second, even at the level of particular expression, the Copyright Act does not protect “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.” A careful review of both songs’ lyrics reveals that Plaintiff's first four allegedly similar elements are expressed differently in “Natasha” and “Nikita.” And the remaining similar elements are rudimentary, commonplace, standard, or unavoidable in popular love songs.  The two songs simply “tell different stories."

Because “Natasha” and “Nikita” are not “substantially similar” as a matter of law, Plaintiff's copyright infringement claim failed as a matter of law.