"Rat Pack" Generic For Live Shows

TRP Entertainment v. Cunningham, No. 13-16754 (9th Cir. Feb. 16, 2016) [non-precedential].

The 9th Circuit held that the term "The Rat Pack" is generic in the context of live shows about or in tribute to members of the Rat Pack, therefore not identifying any particular producer of a Rat Pack tribute show.  Further, the lower court correctly ordered a disclaimer of the term "The Rat Pack" modifying the plaintiff's trademark registration pursuant to 15 USC 1119.

Will.i.am Denied Registration of :I AM" Trademark For Sunglasses

In re i.am.symbolic, llc, Serial Nos. 85044495 (TTAB mailed Oct. 7, 2015).

Black Eyed Peas frontman, "will.i.am," was refused registration of the mark I AM for use on sungalsses, on the basis of an existing mark for sunglasses for which there was a finding of likelihood of confusion.  However, the application was permitted to proceed for other goods identified in the application under Class 9.

Beyonce Dodges Copyright Claim In "XO" v "XOXO" Case

Lane v. Carter et al., No. 14-cv-6798 (SDNY filed 10/21/15) [Doc. 51].

Plaintiff's claim, alleging that he gave a copy of his song XOXO to one of Beyonce's background singers and that Beyonce infringed the song when she created the song XO, was dismissed pursuant to Rule 12(b)(6) and 8(a).  First, the Court found that although Plaintiff holds a copyright registration for the lyrics to XOXO, the registration excluded rights to the music which was the sole basis of the copyright claim.  Moreover, even though Plaintiff alleged that he was an exclusive licensee, he did not allege that hte licensor had a valdily registred copyright.  Accordingly, the claim was dismissed for lack of standing. 

Even though that was potentially curable on an amended pleading, the Court found then considered whether a copyright infringement claim was otherwise substantively viable.  The Court then underwent a "substantial similarity" analysis of: (1) "the beat" and the songs to determine whether the similarities between the two songs concern copyrightable parts of XOXO and whether a reasonable and properly instructed jury could conclude that there is substantial similarity.  The Court found that the use in both songs of "a common four-bar phrase" would not establish substantial similarity between them.  Additionally, comparing the songs holistically, the Court found that no reasonable jury could find the lyrics of XOXO substantially similar to XO.  Aside from thef act that both songs' lyrics use the letters X and O, "there is virtually nothing common to the two song's lyrics" (emphasis in original).  Moreover, the lryics of the two songs have no word in common, save ubiquitous words like "I," "you," your," "is," and "baby."  The themes were also different.  Next, as to the music, the Court listened to the two song and found litte, if anything, in common.  The Court, accordingly, dismissed the complaint with prejudice.

Happy Birthday Lyrics Not Owned By Warner

Marya v Warner/Chappell, No. 13-cv-4460 (C.D. Cal. filed 9/22/14) [Doc. 244].

After collecting royalties for years, a Court found that Warner/Chappell lacked copyright ownership in the lyrics to the world's most famous song, "Happy Birthday."  The Court found that because the current publisher's alleged predecessor "never acquired the rights to the Happy Birthday lyrics, Defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics."

The melody of the song is the same as one called "Good Morning," which was published in a songbook and subject to copyright protection under the 1909 Act until 1949.  Both parties agree the melody entered the public domain years ago.  The origins of the "Happy Birthday" lyrics is less clear, as those lyrics did not appear in the same songbook as "Good Morning."  Subsequent publications of the lyrics noted that the tuen for "Happy Birthday" was the same as "Good Morning," but did not credit an author of the lyrics.  The decision then explains the alleged chain of title to the lyrics of "Happy Birthday."

Plaintiffs, bringing a declaratory judgment action, alleged that Defendants do not own the copyright in the lyrics to Happy Birthday, and thus should not have been collecting royalties for licensing the song (and should be compelled to return collected royalties).  The Court was facing cross-motions for summary judgment.

First, the Court found that a 1935 registration was not subject to a presumption of validity.  There was a facial and material defect in the registration, nameley that it did not state that the lyrics were being copyrighted.  Thus, there was no presumption that the lyrics were registered.

Next, the Court examined: who wrote the lyrics to Happy Birthday?  The Court found there was conflicting evidence, and therefore a material question of fact for trial.

Then, the Court examined whether, whoever wrote the lyrics, any copyright in the work was divested by publication before the 1935 registration?  Under the 1909 Act, general publication without notice of copyright divested the author of common law and federal copyright protection.  Again, the Court found a question of material fact whether the alleged authors granted their publisher the right to generally publish the song.

Next, the Court examined whether the alleged author abandoned her interest.  Although the plaintiffs had found an article where the alleged author said that she had resigned herserlf to the fact that the song was the publics, the Court found questions of fact on this issue again a ground to deny summary judgment.

Then, the Court examined the alleged transfers in interest of the song lyrics, and three old agreements between the alleged authors and their publisher.  The court found that Defendants had no evidence a transfer occurred, whether by oral statement, by writing, or by conduct. "Defendants ask us to find that the Hill sisters eventually gave Summy Co. the rights in the lyrics to exploit and protect, but this assertion has no support in the record. The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to th e lyrics. Defendants’ speculation that the pleadings in the Hill-Summy lawsuit somehow show that the Second Agreement involved a transfer of rights in the lyrics is implau sible and unreasonable. Defendants’ suggestion that the Third Agreement effected such a transfer is circular and fares no better. As far as the record is concerned, even if the Hill sisters still held common law rights by the time of the Second or Third Agreement, they di d not give those rights to Summy Co."

Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.

Claims In 'Sugarman' Case Survive Dismissal; Rights Transferred To Defunct Publisher's Shareholder By Operation Of Law

Gomba Music, Inc. v. Avant, No. 14-cv-11767, 2014 BL 330905 (E.D. Mich. Nov. 24, 2014).

The Court dismissed a corporate music publisher's case in the Sugarman / Sixto Rodriguez case because the company had been administratively dissolved by the State of Michigan in 1971 for failure to file certain papers, but the claims by the company's sole shareholder survived because when the company dissolved, any interests it held were transferred to him by operation of law.  The Court found that whether under the 1976 or 1909 Copyright Acts, by operation of law [Mich. Comp. Laws § 450.1855a], any rights that the company had in the compositions transferred to its sole shareholder when the corporation dissolved.  The Court also found that the decision to sue in the company's name was due to a mistaken belief that the entity would be reinstated and that it was necessary to sue in the company's name because it was the original assignee of rights; accordingly, the Court allowed substitution of the shareholder for the defunct company he formerly owned as sole proprietor, pursuant to Fed. R. Civ. P. 17.

Thereafter, the Court addressed the sufficiency of the causes of action.  First, the Court held that the plaintiff could assert fraud on the copyright office as a declaratory judgment action to attack the prima facie validity of defendants' copyrights in the compositions.  Second, the Court held that the plaintiff could assert a declaratory judgment claim that he is the exclusive owner of the copyright in the compositions because it was plausible that plaintiff was not placed on notice of his claims until sometime after the release of the film Waiting for Sugar Man in July 2012 and therefore plausible that he timely filed his claim for declaratory judgment in May 2014.  Third, the Court held that plaintiff could assert fraudulent concealment claims, and that the claims were not time-barred, because the name of the artist with whom plaintiff had an exclusive agreement (Sixto Rodriguez) was completely absent from the album credits, there were affirmative statement that others wrote the works, the plaintiff had limited motivation to investigate further given the "commercial failure" of the  album at the time it was released, the artist Sixto Rodriguez was under an exclusive contract with the publisher plaintiff, and, later, copyright registrations were issued based on representations that others wrote the works.  Lastly, the Court found that the copyright infringement claim also was not time-barred, and though the plaintiff may be precluded from certain statutory damages/attorneys' fees based on the timing of his attempted registration, that did not bar the claims.

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."

Beatles Tribute Band Trademark Registration Denied For Entertainment Services Because Specimen Did Not Show Live Performance

In re Titan Music, Inc., Serial No. 77344197 (TTAB Aug. 20, 2014).

Trademark applicant "Titan," a Beatles cover band, filed an application to register the mark FAB AGAIN for “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances” in International Class 41.  Registration was denied, and the TTAB affirmed the denial.

The issue with registration was was the specimens provided by the applicant, which were print-outs from CDBaby and Last.fm.  The TTAB found:

Applicant’s specimens may show use of the mark on or in connection with goods (compact discs featuring music) or services (streaming of audio material via a global computer network); however, the specimens do not show use of the mark in connection with “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances.” It is not enough for Applicant to be a provider of services; Applicant also must have used the mark to identify the identified services for which registration is sought.  [Cit. om.] As indicated above, for entertainment services such as those rendered by a musical band, the performance must be live. And while a performance can be recorded, the recording is not itself a performance.

This decision should not be read as finding that the mark FAB AGAIN, as actually used on the specimens, would not be perceived by potential purchasers as a trademark (for compact discs featuring music) or a service mark (for streaming of audio material via a global computer network). The problem is that the specimens of record fail to show use of the mark FAB AGAIN in connection with the services identified in the application, that is, “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances.”

Use Of Rapper's Image On Website Constitutes Copyright Infringement And Violated Right Of Publicity; Questions Remain on Trademark And Third-Party Contribution Claims

Jackson v. Odenot, No. 09-cv-05583 (S.D.N.Y. filed March 24, 2014) [Doc. 150].

Rapper 50 Cent was granted summary judgment on his claims against a website for the unauthorized use of photographs that appeared on the masthead of the website.  50 Cent's claim for copyright infringement was based on a registration for a sound recording which included the relating artwork/photos, and exact copies were used by the defendants.  50 Cent's claim under New York state law for the right of publicity (Civil Rights Law sections 50-51) succeeded because: (1) the pictures "are recognizable likenesses of Jackson because someone familiar with Jackson would be able to identify him in each of the mastheads", and (2) defendants' waived their statute of limitations defense.  However, the Court found that there were questions of fact that precluded summary judgment on 50 Cent's claim under the Lanham Act for false endorsement, 15 USC 1125(a)(1), and also on his claim for common law unfair competition.  The Court did dismiss the defendants' affirmative defenses of fair use, implied license, equitable estoppel, and unclean hands, and found that the other affirmative defenses had been abandoned.  Lastly, the Court held that defendant could not recover on a contribution theory under copyright and trademark law against the third-party defendants, but could seek contribution under the New York state claims.

11th Circuit Clarifies Author's Standing When Publisher Registers Copyright As Author's Assignee

Smith v. Casey, No. 13-12351 (11th Cir. Jan. 22, 2014) (decision here).

At issue in this appeal is whether the author of a musical composition who assigned his rights in exchange for royalties may rely for purposes of standing to sue for infringement under the Copyright Act on a registration his publisher filed.  The 11th Circuit found that the lower court erred in concluding that the estate lacked statutory standing to sue for copyright infringement.

The basic facts are this.  Around the same time a song called "Spank" was recorded, Harrick Music, Inc. (Harrick Music), a publishing company affiliated with the record label Sunshine Sound, registered a copyright for the musical composition “Spank,” identifying Smith as composer and itself as claimant.  Harrick Music checked a box on the registration indicating the song was not a composition made for hire.  In the ensuing years, Smith acquiesced in Harrick Music’s administration of the “Spank” composition copyright, but, he alleged, the company never remitted a cent to him. According to the complaint, neither did Sunshine Sound. Under Smith's Recording Agreement with Sunshine and the form songwriter’s agreement attached to it,
however, Smith was owed percentage royalties for the song’s exploitation in exchange for assigning his rights to it. So on November 28, 2011, shortly before his death, Smith through counsel sent a cease-and-desist letter revoking Harrick Music’s authority to administer “Spank.” And Smith also filed with the Copyright
Office four Notices of Termination, seeking to formally record his revocation. Despite this, the defendants continued to commercially exploit the composition, and thereafter Smith's estate sued for infringement of the composition (not the sound recording).

Two defendants (not Sunshine or Harrick) moved to dismiss, and the district court concluded Smith lacked statutory standing to pursue his copyright claim and sua sponte dismissed that count with prejudice as to all of the defendants.  Harrick Music, not Smith or his estate, had registered the copyright, the district court noted, and registration was a necessary precondition to filing suit for infringement.

On appeal, the 11th Circuit first examined sections 411 and 501 of the Copyright Act: "The 1976 Copyright Act’s legislative history explains that Congress intended 'beneficial owner,' as the term is used in § 501(b), to 'include . . . an author who had parted with legal title to the copyright in exchange for percentage
royalties based on sales or license fees.'"  Continuing,

Under this definition, the estate has a sufficient ownership interest for standing under § 501(b). According to Smith’s allegations, he never signed any agreement giving Harrick Music the right to exploit the “Spank” copyright. But even were we to treat Smith’s agreement to permit Sunshine Sound to execute the form songwriter’s contract appended to his Recording Agreement as acquiescence to its terms for the “Spank” composition, Smith still would only have assigned his rights to the musical composition in exchange for royalties. Thus, he has at least a beneficial interest that satisfies § 501(b) of the Copyright Act.

The twist was that Harrick, not Smith, had filed the registration.  Nonetheless, the 11th Circuit found that "The district court’s construction of § 411(a) was too narrow. Harrick Music registered a claim to copyright in the 'Spank' composition, specifically identifying Smith as the composer and informing the Copyright Office the work was not made for hire. Nothing in § 411(a) indicates that a composer who has agreed to assign his legal interest in a composition, along with the right to register it, in exchange for royalties, may not rely on the registration his assignee files. Where a publisher has registered a claim to copyright in a work not made for hire, we conclude the beneficial owner has statutory standing to sue for infringement."  (Emphasis added).

Although the 11th Circuit reversed on the standing issue, it found that the District Court properly dismissed plaintiff's declaratory judgment claim.

Band Refused Trademark Registration For Name "The Slants"

In re Simon Shiao Tam, Serial No. 85472044 (TTAB Sep. 26, 2013).

A band sought to register its name "The Slants" with the U.S. Patent & Trademark Office.  Registration was refused under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols under Trademark Act Section 2(a).”  The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register.

The TTAB found, "Thus, it is abundantly clear from the record not only that THE SLANTS, used for the identified services, would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances. The evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant’s services, shows that meaning to be a derogatory reference to people of Asian descent."  The TTAB also rejected the applicant's argument that it had "good intentions" (e.g., taking ownership of a disparaging term): "the fact that applicant has good intentions with its use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable".  Lastly, the TTAB found that the record established that the slang term “slant” or its plural “slants,” when used to indicate
ethnicity, is disparaging to a substantial composite of the referenced group.

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.

KC/Sunshine Case Dismissed For Lack Of Standing

Smith v Casey, No. 1:12-cv-23795 (S.D. Fla. 3/21/2013) [Doc. 71].



Plaintiff was the administer of an estate of a recording artist, songwriter, producer, and musician who died in 2012. The decedent was the sole author of the musical composition entitled Spank.  Plaintiff alleged that, “[d]espite receipt of Decedent Smith’s Cease and Desist notice Defendants KC, Harrick Music, Sunshine Sound, Horne and Joy Productions have continued to commercially exploit the Composition ‘Spank.’  Count I of Plaintiff’s Complaint was for copyright infringement of the Spank composition only, and only for the period from November 28, 2011, when the Cease & Desist Letter was written, through the present.


Defendants moved to dismiss the copyright claims against them on either of two separate grounds: (1) Plaintiff lacks standing to sue for copyright infringement, given that he never registered his copyright interest; and (2) the Complaint contains insufficient allegations of infringement activity.  The Court agreed that the copyright infringement count should be dismissed for all Defendants because Plaintiff lacked standing to sue, and additionally as to the moving Defendants because of insufficient pleadings.

Standing to sue for infringement must necessarily be grounded in ownership of a copyright
interest. That ownership is determined in part by compliance with the formalities of the
Copyright Act. The Act provides that “[t]he legal or beneficial owner of an exclusive right under
a copyright is entitled, subject to the requirements of section 411, to institute an action for any
infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C.
§ 501(b). Section 411, in turn, states that “no civil action for infringement of the copyright in
any United States work shall be instituted until preregistration or registration of the copyright
claim has been made in accordance with this title.” Id. § 411(a). Any registration for the
copyright sued upon must be commenced no later than the date that the suit was brought.  If Plaintiff produces a certificate of copyright, the burden shifts to Defendants to demonstrate why the claim of copyright is invalid. 

Here, Plaintiff has failed to produce a certificate of copyright with respect to the Spank
composition, and fails even to allege that it had registered for one by the time this Complaint was filed. Plaintiff does attach a Certificate of Copyright Registration, dated March 1, 1979, for
Spank to the Complaint, but the Certificate names Harrick Music as the Copyright Claimant.
Smith is listed only as the author, and the Registration notes that “Harrick Music, Inc. received transfer by written notice from Ronald Luis Smith.”  Even if the registration were the fruit of inaccurate information submitted by the registrant, Harrick Music, it is still a prerequisite to the filing of a copyright infringement claim – a prerequisite that neither Plaintiff nor Smith has satisfied. As such, the Court finds that Plaintiff lacks standing to bring Count I against any and all of the defendants, including Horne and Joy Productions.  [Internal citations omitted].

Trademark Denied; YouTube Clip Not Proper Specimen

In re Rogowski, 2012 ILRC 3251 (TTAB Dec. 11, 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:

The submitted specimen, however, does not show the required correspondence between the mark and the identified goods being offered for sale or transport in commerce. We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant's specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof. We view this failing as being similar to on-line retailing situations in which a webpage specimen fails to show a means for ordering the goods or service. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did not directly provide a means for ordering applicant's goods); In re Genitope Corp. 78 USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004) (website specimen for downloadable computer software acceptable when it includes method to download, purchase or order the software). See also, In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) (“Relevant factors include, for example, whether Sones’ webpages have a ‘point of sale nature….’”) (citation omitted).

We further acknowledge applicant's intent and his assertion that viewers of his uploaded videos on YouTube may use third party software such as RealPlayer to record the audio portions of the videos and ultimately transfer this music file to an MP3 player or other devices and formats. However, on the record before us, in the absence of a “download” link or the equivalent thereof, applicant's specimen on its face fails to show use of his mark in commerce for the identified goods

Lyricist's Suit Against Video Game Developer Survives

Greer v. Electronic Arts, Inc., No. 10-cv-3601 (N.D. Cal. order filed Feb. 1, 2012) [Doc. 96].

In this copyright infringement action, plaintiff contended that defendant improperly used a

sound recording and the lyrics of a song by incorporating them into a widely-distributed videogame. Defendant moved for summary judgment on three independent grounds. Although two of defendant’s three arguments presented close calls, triable issues of fact existed that precluded summary judgment, and the motion was denied.

Facts: Plaintiff was a member of a band that registered a copyright relating to an album the band had recorded, which included the song at issue. Plaintiff subsequently filed a correction to the registration to clarify that he claimed sole copyright to the lyrics of the song. One of Plaintiff's band mates was employed by a video game developer, and was working to create a soundtrack for a video game that was being was developed. The band mate chose to include the song as part of the soundtrack for the game. The band mate and two other band members submitted declarations stating that all of the band members executed a written license agreement giving the developer the right to use the song in the game in exchange for one dollar and acknowledgement in the on-screen credits of the game. No signed copy of such a license agreement was located, and Plaintiff denied ever being asked to sign a license agreement, and alleges that he did not become aware that the song had been incorporated into the game until 2009.

Discussion: First, the court addressed issues with the registration of the album containing the song as a "PA" (performing arts), in contrast to registration on a form "SR" (sound recording). While Form SR may be used to register both the underlying composition and the

sound recording if separate registrations are not necessary or desired, nothing on Form PA permits it to be used to register a sound recording. Thus, defendant was correct that the band’s recorded performance of the song that was used in the game was never registered. That fact, however, wasnot fatal to plaintiff's claims, because plaintiff's complaint specifically identified by registration number the copyrighted work that plaintiff alleged had been unlawfully copied. While the complaint also repeatedly asserted the erroneous legal conclusion that the registration was of the sound recording (as opposed to the underlying musical composition) the facts alleged were sufficient to state a claim for infringement of the musical composition. There was no dispute that the band's performance of the song incorporated in the game was a performance of the underlying composition.

Second, the Court analyzed the competing arguments about the existence of a license. The Court concluded that the record did not permit a conclusion on summary judgment that the license agreement was ever signed, either in the unsigned form of the document defendant hadsubmitted, or in any form. While the recollections on both sides were vague, they were in direct conflict.

Third, the Court analyzed the defense of laches. Defendant made a compelling showing that this was a case in which laches may ultimately apply to bar at least some portion of plaintiff's claims. Among other things, the evidentiary prejudice was manifest in the witnesses’ fading memories and the uncertainty in the documentary record as to whether the license agreement was ever signed. The critical question, however, was when plaintiff knew or should have known that the song had been incorporated into the game. Plaintiff's testimony that he did not learn of the song’s use in the game until 2009 was sufficient to create a triable issue of fact as to his actual knowledge. If the trier of fact accepts the testimony that the possibility of using the song in the game was discussed at length prior to plaintiff's departure from the band, he more likely can be held to a duty of some inquiry, even assuming he never saw or signed the license agreement. Defendant had not shown, however, that undisputed facts compel a finding that plaintiff was on constructive notice as early as 1995, or at any particular time thereafter. Finally, defendant had not established that laches necessarily would bar plaintiff from seeking injunctive relief against any ongoing infringement, even assuming it ultimately bars some or all of his claims for past damages.

80s Rock Band Argues Copyright Claim Is Time Barred

McCarthy et al. v. Johannesson et al., No. 1:11-cv-07422 (N.D. Ill. filed Jan. 17, 2012) [Doc. 28].

In moving to dismiss pursuant to Rule 12(b)(6), defendants-- members of the 80s rock band "Poison" -- argue that because over 20-25 years have passed since plaintiffs claim that defendants violated plaintiffs' supposed copyright in four of plaintiffs' songs, the action is "spurious and hopelessly timebarred". Additionally, defendants argued that several of the claims are barred because plaintiffs do no have copyright registrations for the songs at issue.

Santogold Faces TM Suit

New-to-the-spotlight Brooklyn artist Santogold, and her (indie) label Downtown Music / Lizard King Records, were sued for alleged trademark infringement of the SANTO GOLD mark by Santo Rigatuso a/k/a Santo Gold. (Stereogum article.)

Trademark Serial No. 77044349 for the standard character mark SANTOGOLD list Defendant Santi White as the registration applicant. Applicant lists use of the SANTOGOLD mark in the following goods and services: Downloadable video recordings featuring music; Musical video recordings; Pre- recorded CD's, video tapes, laser disks and DVD's featuring music; Prerecorded digital video disks featuring music; Video Disks featuring music; Video recordings featuring music; Visual recordings and audio visual recordings featuring music and animation; Entertainment services, namely live performances by a musical recording artist.

How does this compare to Plaintiff's alleged use of the SANTO GOLD mark? How does the absence of a registration for Plaintiff's mark affect his suit?

How does the pending status of Defendant's application affect any defense or claim on her behalf?

Santogold - Trademark letter as of date of suit - Upload a Document to Scribd

Read this document on Scribd: Santogold - Trademark letter as of date of suit

[Santo Rigatuso aka Santo Gold v. Santi White aka Santogold; Downtown Music LLC; Lizard King Records Inc., No. 08- CV-5475 (S.D.N.Y. complaint filed 6/17/2008)]

Co-Authorship Dispute Over Composition Performed by System of a Down

In Maxwood Music Limited v. Malakian et al., case no. 1:08-cv-01730-RWS (S.D.N.Y. complaint filed Feb. 21, 2008), the assignee of copyright interests in various compositions by Casey Chmielinksi p/k/a/ Casey Chaos seeks a declaratory judgment against System of a Down members and related publishing companies.

The dispute arises out of the hit song "B.Y.O.B", the first single on the System of a Down album entitled Mezmerize, and winner of the 2005 GRAMMY Award for "Best Hard Rock Performance". (Notably, Chaos recieved a certificate from the National Academy of Recording Arts and Sciences recognizing his participation as a songwriter of the GRAMMY Award-winning song.)

The complaint alleges that Chaos and Daron Malakian, lead guitarist of the System of a Down, collaborated on an independent project entiled "Scars on Broadway", during which the two wrote approximately 14 songs. "At all times, Malakian and Chaos considered themselves the sole co-authors of 'Scars on Broadway' and each of the individual compositions written for it, including the Composition [B.Y.O.B.], and intended that they be joint authors of those musical works." (Compl. para. 14). However, the project was "put...on hold while they each returned to their own music for their respective bands." (Id. at 17.)

Unbeknownst to Chaos, B.Y.O.B. was later recorded by System of a Down and released as a single to promote Mezmerize, an album that has sold millions worldwide.

Chaos was not listed in the credits for the Single or the Album as a co-author of the Composition. Upon the release of the Album, however, Malakian's publishing company [Sony] filed a registration with the Copyright Office for the Composition that explicitly listed Chaos as an author together with Malakian.
...

Sony also registered Chaos as a co-author with the relevant public performance societies in the United States and United Kingdom that collect royalties for songwriters generated from public performances of their compositions.

(Id. at 21-22.)

Based on the above, Plaintiff (as assignee of Chaos' copyright interests) seeks a declaratory judgment that B.Y.O.B. was co-authored by Chaos and Malakian, without the participation of any other party; further, plaintiff seeks a declaration that Chaos owned (and Plaintiff now owns by virtue of an assignment) an equal and undivided 50% share of B.Y.O.B. Lastly, plaintiff seeks an accounting.

The theme from plaintiff's complaint is clear: if Chaos was not an equal-share co-author, why was he listed with both the Copyright Office and the public performance societies as a co-author?

An interesting aside - why did defendants consent to personal jurisdiction in the Southern District of New York?

Copyright Statute of Limitations Issues

In Armstrong v. Global Pacific Records, Inc., No. 1:08-cv-10228-PBS (D.Mass complaint filed 2/11/08), Plaintiff -- alleged author of various musical compositions and related master recordings -- filed suit against a record label for breach of contract, and copyright infringment of those various compositions and related sound recordings.

Plaintiff's breach of contract claim arises out of the defendant record label's failure to ever pay royalties (both mechanical, and for the sound recordings). Given Plaintiff's allegations that the contracts were entered into no later than 1993, is their breach of contract claim barred by Massachusett's 6-year statute of limitations on contract claims?

Additionally, Plaintiff's copyright claims arise out of defendant's alleged unauthorized exploitation of the sound recordings and musical compositions since no later than (depending on the work at issue) both 1988 and 1997. At what point did Plaintiff's claim accrue, and is it barred by section 507(b) of the Copyright Act: "No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued."

Especially interesting is that Plaintiff did not obtain copyright registrations for the sound recordings or musical compositions until the summer of 2007; presumably, registrations were obtained so that Plaintiff could file suit (17 U.S.C. 411). However, the sound recordings embodying the compositions at issue were recorded and commercially released in 1988 and/or 1992-1993. What effect does Plaintiff's recent registration have, including on Plaintiff's damages?