Flo & Eddie Inc. v. Sirius XM Radio Inc., et al., No. 2:13-cv-05693-PSG-RZ (C.D. Cal. filed Sep. 22, 2014) (Doc. 117).
Plaintiff, owner of all rights to The Turtles’ master sound recordings (including the hit "Happy Together"), was granted summary judgment against Sirius XM on its causes of action for violation of California
copyright law (California Civil Code § 980(a)(2)), California’s Unfair Competition Law (Cal. Bus. & Prof. Code §§ 17200, et seq.), and common law misappropriation and conversion, but only so far as the claims were premised on Sirius XM’s public performance of Plaintiff's recordings, not its alleged reproductions for which there were outstanding questions of fact.
Plaintiff argued that Sirius XM was liable for two distinct unauthorized uses of its sound recordings: (1) publicly performing its recordings by broadcasting and streaming the content to end consumers and to secondary delivery and broadcast partners, and (2) reproducing the recordings in the process of operating its satellite and Internet radio services. Plaintiff contended that, in California, copyright ownership of a pre-1972 sound recording includes the exclusive right to publicly perform the recording; therefore, if anyone wishes to publicly perform such a recording, they must first seek authorization from the recording’s owner. The Court agreed.
First, the Court found that California statutory and common law governs the rights that attach to pre-1972 sound recordings because the Federal Copyright Act does not apply to those earlier recordings and explicitly allows states to continue to regulate them. Second, the Court examined the provision of California’s copyright statute that contains a provision directly addressing pre-1972 sound recordings. Cal. Civ. Code § 980(a)(2) ("The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound
recording").
The crucial point of statutory interpretation for this case was whether “exclusive ownership” of a sound recording carries within it the exclusive right to publicly perform the recording. The Court’s textual reading of § 980(a)(2) was that the legislature intended ownership of a sound recording in California to include all rights that can attach to intellectual property, save the singular, expressly-stated exception for making “covers” of a recording.
The Court further found that the rule of statutory construction requiring express statements to alter the common law did not apply because, when the legislature passed § 980(a)(2), there was no common law rule in California rejecting public performance rights in sound recording ownership. Also, the legislative history of § 980(a)(2) and its comparison to the Federal Copyright Act bolstered the Court’s plain textual reading of the statute that sound recording ownership is inclusive of all ownership rights that can attach to intellectual property, including the right of public performance, excepting only the limited right expressly stated in the law (that the owner does not have the exclusive right to record and duplicate “covers"). Lastly, the Court found further support for its textual reading of the statute as inclusive of the right of public performance from the only two courts that have ruled on or discussed this right under § 980(a)(2). Accordingly, the Court granted summary judgment on copyright infringement in violation of § 980(a)(2) in favor of Plaintiff.
Borrowing the violation of § 980, the Court found that Sirius also violated California's Unfair Competition Law because Sirius publicly performs Plaintiff's sound recordings without authorization to do so. Also, the Court found that Sirius XM’s unauthorized performances established conversion damages in the form of license fees that Sirius XM should have paid Plaintiff in order to publicly perform its recordings. The foregone licensing or royalty payments that Sirius XM should have paid before publicly performing the recordings also constituted misappropriation.
Lastly, the Court found that Sirius could not rely on the doctrine of laches because this was an action at law seeking money damages, and laches is an equitable defense. Accordingly, the Court granted Plaintiff's motion for summary judgment on all causes of action, but only so far as the claims are premised on Sirius XM’s public performance of the recordings, not its alleged reproductions.
September 23, 2014
September 18, 2014
Taylor Swift Faces Trademark Action Concerning Merchandise
Blue Sphere, Inc. v. Swift, Case No. SACV 14-00782-CJC (C.D. Cal. Sep. 17, 2014).
The Court denied country-star Taylor Swift's motion to dismiss plaintiff's trademark infringement and dilution case. Defendants contended that Plaintiffs had failed to show a likelihood of confusion. The Court found that while it is possible that Plaintiffs may not be able to present sufficient evidence to survive a summary judgment motion, they had plausibly alleged facts to survive a motion to dismiss. Plaintiffs alleged that they own the mark LUCKY 13, and further alleged that the Defendants’ use of the identical LUCKY 13 mark in connection with the sale of t-shirts online and through the online promotion of a “Lucky 13 Sweepstakes” is likely to cause confusion. The Court also found that Plaintiffs sufficiently alleged that the mark is famous so that the dilution claim survived.
The Court denied country-star Taylor Swift's motion to dismiss plaintiff's trademark infringement and dilution case. Defendants contended that Plaintiffs had failed to show a likelihood of confusion. The Court found that while it is possible that Plaintiffs may not be able to present sufficient evidence to survive a summary judgment motion, they had plausibly alleged facts to survive a motion to dismiss. Plaintiffs alleged that they own the mark LUCKY 13, and further alleged that the Defendants’ use of the identical LUCKY 13 mark in connection with the sale of t-shirts online and through the online promotion of a “Lucky 13 Sweepstakes” is likely to cause confusion. The Court also found that Plaintiffs sufficiently alleged that the mark is famous so that the dilution claim survived.
September 17, 2014
Tim McGraw Didn't Have Access To Plaintiff's Demo Tape; Summary Judgment Affirmed In Defendants' Favor
Martinez v. McGraw et al., No. 13-5796 (6th Cir. filed Sep. 15, 2014).
The 6th Circuit affirmed summary judgment in favor of defendants in a copyright-infringement action wherein Plaintiff alleged that Defendants infringed his musical composition Anytime, Anywhere
Amanda with the musical composition Everywhere by country-artist Tim McGraw. On appeal, the 6th Circuit found that the District Court applied the correct standard -- that defendant had an opportunity to access Plaintiff's song -- and that Plaintiff could not meet that standard. "There is no dispute that Anytime was never published or distributed, never received radio play, is not available on iTunes, has not been performed by third parties, and that Martinez performed the song only in South Texas. Defendants’ only possible access would have been through the demo tape Martinez gave to Tomac." The record, though, was devoid of any evidence that the demo tape had been passed along. "Martinez’s theories of access through third-party intermediaries fall short. The district court properly determined that Martinez presented only 'attenuated chains of hypothetical transmittals' in support of his claim that Defendants heard or had a reasonable opportunity to hear Anytime. See Patry on Copyright § 9:29. The chain of access vanishes after Tomac gave the lone demo tape to Bartley in the fall of 1996, and the hypothetical transmittals fail to support
a reasonable inference that any Defendant or associate of any Defendant received a copy of Anytime, much less that Wiseman or Reid, the alleged infringers, heard or had a reasonable opportunity to hear Anytime and copied it before they co-wrote Everywhere in November 1996." Lastly, there was no error because no evidence was presented that protectible elements of the two works are substantially similar.
The 6th Circuit affirmed summary judgment in favor of defendants in a copyright-infringement action wherein Plaintiff alleged that Defendants infringed his musical composition Anytime, Anywhere
Amanda with the musical composition Everywhere by country-artist Tim McGraw. On appeal, the 6th Circuit found that the District Court applied the correct standard -- that defendant had an opportunity to access Plaintiff's song -- and that Plaintiff could not meet that standard. "There is no dispute that Anytime was never published or distributed, never received radio play, is not available on iTunes, has not been performed by third parties, and that Martinez performed the song only in South Texas. Defendants’ only possible access would have been through the demo tape Martinez gave to Tomac." The record, though, was devoid of any evidence that the demo tape had been passed along. "Martinez’s theories of access through third-party intermediaries fall short. The district court properly determined that Martinez presented only 'attenuated chains of hypothetical transmittals' in support of his claim that Defendants heard or had a reasonable opportunity to hear Anytime. See Patry on Copyright § 9:29. The chain of access vanishes after Tomac gave the lone demo tape to Bartley in the fall of 1996, and the hypothetical transmittals fail to support
a reasonable inference that any Defendant or associate of any Defendant received a copy of Anytime, much less that Wiseman or Reid, the alleged infringers, heard or had a reasonable opportunity to hear Anytime and copied it before they co-wrote Everywhere in November 1996." Lastly, there was no error because no evidence was presented that protectible elements of the two works are substantially similar.
August 27, 2014
SoundExchange/Sirius Royalty Dispute Belongs Before Copyright Royalty Board, Not Federal Court
SoundExchange, Inc. v. Sirius XM Radio, Inc., No. 1:13-cv-1290 (D.D.C. filed August 26, 2014).
Pursuant to the "primary jurisdiction" doctrine, a federal district court judge stayed a royalties dispute between SoundExchange and Sirius, saying that the dispute belongs before the Copyright Royalty Board. The parties already had met before the CRB in two prior proceedings, setting royalty rates for the digital broadcast of sound recordings on satellite radio SoundExchange brought an action in federal court alleging that Sirius underpaid royalties owed from 2007-2012 (the subject of the first CRB proceeding). The instant dispute centered on the meaning of the term "Gross Revenues" (a percentage of which are the royalties owed SoundExchange), and Sirius's alleged reductions/exclusions therefrom based on pre-72 recordings and Sirius' premiere subscriber package. The Court agreed with Sirius that the disputes "are best suited to review in the first instance by the CRB. ... [T]he technical and policy expertise of the CRB makes referral to that body appropriate." Because neither party was asking for a change in the royalty rates, only a clarification, the CRB was found to have continuing jurisdiction.
Pursuant to the "primary jurisdiction" doctrine, a federal district court judge stayed a royalties dispute between SoundExchange and Sirius, saying that the dispute belongs before the Copyright Royalty Board. The parties already had met before the CRB in two prior proceedings, setting royalty rates for the digital broadcast of sound recordings on satellite radio SoundExchange brought an action in federal court alleging that Sirius underpaid royalties owed from 2007-2012 (the subject of the first CRB proceeding). The instant dispute centered on the meaning of the term "Gross Revenues" (a percentage of which are the royalties owed SoundExchange), and Sirius's alleged reductions/exclusions therefrom based on pre-72 recordings and Sirius' premiere subscriber package. The Court agreed with Sirius that the disputes "are best suited to review in the first instance by the CRB. ... [T]he technical and policy expertise of the CRB makes referral to that body appropriate." Because neither party was asking for a change in the royalty rates, only a clarification, the CRB was found to have continuing jurisdiction.
August 26, 2014
Judge Finds Liability In Shakira Infringement Trial
Mayimba Music, Inc. v. Sony Corp. of Am. et al., No. 1:12-cv-01094-AKH (SDNY filed 08/19/14) [Doc. 104].
This is an infringement action alleging that a Shakira song infringes the copyright in a musical composition. After a bench trial, the Court found: (a) that plaintiff, as exclusive licensee, had standing; (b) there was no proof of laches; (c) the Shakira song was an unlawful copy of plaintiff's song; and (d) the US distributors were liable for infringement. The next stage was determining damages, or alternatively a permanent infringement.
This is an infringement action alleging that a Shakira song infringes the copyright in a musical composition. After a bench trial, the Court found: (a) that plaintiff, as exclusive licensee, had standing; (b) there was no proof of laches; (c) the Shakira song was an unlawful copy of plaintiff's song; and (d) the US distributors were liable for infringement. The next stage was determining damages, or alternatively a permanent infringement.
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:
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.”
August 18, 2014
Suit Against Kanye West Dismissed On "De Minimis" Grounds
Steward v. West, No. CV 13-02449 (C.D. Cal. Aug. 14, 2014).
In this copyright infringement action against Kanye West et al concerning a sample, the Court granted defendants' Rule 12(c) motion for judgment on the pleadings. On the motion, the Court considered the sound recordings and held that, while plaintiff's sound recordings were sufficiently original to be protectable, defendants' copying was de minimis. "The result of these distortions and the short length of the samples is that the average audience would not recognize plaintiffs’ Song in any of Defendants’ songs without actively searching for it. In the Ninth Circuit, digital sampling is de minimis when 'the average audience would not recognize the appropriation.'" Accordingly, the copyright infringement (and dependent contributory liability claims) were dismissed.
In this copyright infringement action against Kanye West et al concerning a sample, the Court granted defendants' Rule 12(c) motion for judgment on the pleadings. On the motion, the Court considered the sound recordings and held that, while plaintiff's sound recordings were sufficiently original to be protectable, defendants' copying was de minimis. "The result of these distortions and the short length of the samples is that the average audience would not recognize plaintiffs’ Song in any of Defendants’ songs without actively searching for it. In the Ninth Circuit, digital sampling is de minimis when 'the average audience would not recognize the appropriation.'" Accordingly, the copyright infringement (and dependent contributory liability claims) were dismissed.
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