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.

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.

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.

LIVE Former Singer Sued For Use Of Band Name

Action Front Unlimited Inc. v. Edward Kowalczyk, No. 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.

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."

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.