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.
September 13, 2012
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.
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."
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.
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.
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 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.
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.
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