Williams v. Bridgeport Music, Inc., No. 13-cv-06004 (C.D. Cal. complaint filed 8/15/2013).
Plaintiffs bring this declaratory judgment action seeking a declaration that their summer-single "Blurred Lines" does not infringe defendants songs: (i) Marvin Gaye's "Got to Give it Up", and (ii) Funkadelic's "Sexy Ways." Plaintiffs claim there are no similarities between "Blurred Lines" and those defendants own, other than commonplace musical elements. "Plaintiffs created a hit and did it without copying anyone else's composition." What do you think?
August 19, 2013
Chubby Checker TM Claims Survive But State Law Claims Preempted By CDA
Evans et al. v. Hewlett Packard Co. et al., No. 3:13-cv-02477-WHA (N.D. Cal. filed 08/15/13) (Doc. 67).
Plaintiff is the artist known as "Chubby Checker" and various entities that own related trademarks. This case concerns a software application called “The Chubby Checker” that is offered for sale/download on defendants' web-based store. The app purports to estimate the size of a man’s genitals based on his shoe size.
The Court held that Plaintiff stated a claim for federal and common law trademark infringement. The crux of defendants’ argument was that the complaint only attempts to plead claims for contributory infringement and not for direct infringement. To be liable for contributory infringement, defendants argue that they must have had actual knowledge of the infringement and yet continued to sell the app. Defendants urge that the complaint fails to allege either that defendants knew of the infringement or that defendants continued to sell the app after receiving plaintiffs’ cease-and-desist letter. However, the Court disagreed, finding: "Construed favorably to the plaintiffs, these allegations are sufficient to permit an inference that defendants knew, or could have reasonably deduced that the owner of the Chubby Checker mark would never have consented to license the mark for such a vulgar purpose."
However, the Court held that Plaintifffs' state-law claims — violation of Pennsylvania’s unfair competition and trademark laws and Pennsylvania’s and California’s right of publicity statutes — were preempted by Section 230 of the Communications and Decency Act (47 U.S.C. 230). The Court found that defendants were internet service providers that host third-party content and not content providers, and defendants therefore enjoyed the broad immunity provided under Section 230 of the CDA from all state claims relating to publishing content created by third parties.
Plaintiff is the artist known as "Chubby Checker" and various entities that own related trademarks. This case concerns a software application called “The Chubby Checker” that is offered for sale/download on defendants' web-based store. The app purports to estimate the size of a man’s genitals based on his shoe size.
The Court held that Plaintiff stated a claim for federal and common law trademark infringement. The crux of defendants’ argument was that the complaint only attempts to plead claims for contributory infringement and not for direct infringement. To be liable for contributory infringement, defendants argue that they must have had actual knowledge of the infringement and yet continued to sell the app. Defendants urge that the complaint fails to allege either that defendants knew of the infringement or that defendants continued to sell the app after receiving plaintiffs’ cease-and-desist letter. However, the Court disagreed, finding: "Construed favorably to the plaintiffs, these allegations are sufficient to permit an inference that defendants knew, or could have reasonably deduced that the owner of the Chubby Checker mark would never have consented to license the mark for such a vulgar purpose."
However, the Court held that Plaintifffs' state-law claims — violation of Pennsylvania’s unfair competition and trademark laws and Pennsylvania’s and California’s right of publicity statutes — were preempted by Section 230 of the Communications and Decency Act (47 U.S.C. 230). The Court found that defendants were internet service providers that host third-party content and not content providers, and defendants therefore enjoyed the broad immunity provided under Section 230 of the CDA from all state claims relating to publishing content created by third parties.
Plaintiff in Roc Logo Case Granted Leave To Amend
Walker v. Carter et al., No. 1:12-cv-05384-ALC-RLE (S.D.N.Y. filed 08/14/13) (Doc. 58).
Plaintiff alleged that defendants (Jay-Z, his record label(s) and business partners) entered into an oral contract with Plaintiff in 1995 under which Plaintiff was to re-design the logo for the Roc-A-Fella record label in exchange for: (i) $3,500 up-front, and (ii) 2% of all revenues from products bearing the logo for the next ten years. The moving defendants argued that Plaintiff failed to state a claim under Fed. R. Civ. P. 12(b)(6) because none of them had any dealings with plaintiff. In opposition, Plaintiff requested leave to amend the complaint. The Court denied the motions without prejudice and granted Plaintiff leave to amend (but was cautioned about requesting leave to amend again).
Plaintiff alleged that defendants (Jay-Z, his record label(s) and business partners) entered into an oral contract with Plaintiff in 1995 under which Plaintiff was to re-design the logo for the Roc-A-Fella record label in exchange for: (i) $3,500 up-front, and (ii) 2% of all revenues from products bearing the logo for the next ten years. The moving defendants argued that Plaintiff failed to state a claim under Fed. R. Civ. P. 12(b)(6) because none of them had any dealings with plaintiff. In opposition, Plaintiff requested leave to amend the complaint. The Court denied the motions without prejudice and granted Plaintiff leave to amend (but was cautioned about requesting leave to amend again).
August 16, 2013
Copyright Case Properly Reinstated Against Church
Yesh Music v. Lakewood Church et al., No. 12-20520 [Doc. 00512341666] (5th Cir. filed 08/14/2013).
Plaintiff filed a copyright infringement complaint against Defendants in Texas. Defendants are a large church and its pastors, Joel and Victoria Osteen. Plaintiff had granted the church a limited license to use a song
in connection with various marketing media. When the church used the song in a televised promotional broadcast, Plaintiff asserted that the limited license did not permit use of the song on television and that in any case, the term of the license had expired. Unable to resolve their dispute, Plaintiff filed a copyright infringement suit against Defendants.
Plaintiffs it later voluntarily dismissed the lawsuit without prejudice. Plaintiff then filed an identical case in federal court in New York. Back in Texas, the church has filed a motion for its costs and when the parties were before the Court on that matter, the parties agreed on the record to dismiss the New York action and re-instate the Texas action. Because under Rule 41(a)(1)(B), the two successive voluntary dismissals of the lawsuit had the effect of rendering the second dismissal as one with prejudice, Plaintiff filed a motion to vacate its voluntary dismissal under Rule 60(b), which the district court granted. Defendant opposed, arguing that Rule 60(b) only applies to a "final" order or judgment, and the first voluntary dismissal was not "final." The Fifth Circuit found that a voluntary dismissal without prejudice is a “final proceeding” under Rule 60(b) and the district court did not abuse its discretion in reinstating the case.
Plaintiff filed a copyright infringement complaint against Defendants in Texas. Defendants are a large church and its pastors, Joel and Victoria Osteen. Plaintiff had granted the church a limited license to use a song
in connection with various marketing media. When the church used the song in a televised promotional broadcast, Plaintiff asserted that the limited license did not permit use of the song on television and that in any case, the term of the license had expired. Unable to resolve their dispute, Plaintiff filed a copyright infringement suit against Defendants.
Plaintiffs it later voluntarily dismissed the lawsuit without prejudice. Plaintiff then filed an identical case in federal court in New York. Back in Texas, the church has filed a motion for its costs and when the parties were before the Court on that matter, the parties agreed on the record to dismiss the New York action and re-instate the Texas action. Because under Rule 41(a)(1)(B), the two successive voluntary dismissals of the lawsuit had the effect of rendering the second dismissal as one with prejudice, Plaintiff filed a motion to vacate its voluntary dismissal under Rule 60(b), which the district court granted. Defendant opposed, arguing that Rule 60(b) only applies to a "final" order or judgment, and the first voluntary dismissal was not "final." The Fifth Circuit found that a voluntary dismissal without prejudice is a “final proceeding” under Rule 60(b) and the district court did not abuse its discretion in reinstating the case.
August 15, 2013
New York Law On Photographing And Recording Concerts
In researching for an unrelated matter, I came across New York's Arts and Cultural Affairs Law § 31.01. The law was enacted in 1983. Imagine how it might apply today, with the abundance of iPhones and other smart-phones with image capturing and sound recording capabilities.
The statute prohibits, inter alia, the taking of photographs or making of sound recordings of any performance presented in a theater "without having first obtained the written consent of the management to do so." Remedies for the management include bringing an action for an injunction, an accounting, or for damages resulting from or in respect of any photographs or sound recordings of any performance made without the consent required or resulting from or in respect of any distribution or attempted distribution of any such photographs or sound recordings or reproductions thereof.
Further, the statute provides that management shall have the right to request and obtain possession of photographic or sound recording devices until the conclusion of the performance. Failure by any person admitted or seeking admission to a theatre in which a performance is to be or is being presented, refuses or fails to give or surrender possession of any photographic or sound recording device which such person has brought into or attempts to bring into such theatre without having first obtained the written consent of the management to do so, then the management shall have the right to remove such person therefrom or refuse admission thereto to such person, and shall thereupon offer to refund and, unless such offer is refused, refund to such person the price paid by such person for admission to such theatre.
If such person refuses to leave such theatre after having been informed by the management thereof that possession of any photographic or sound recording device in such theatre without the written consent of the management is prohibited, then such person shall be deemed to be remaining in the theatre unlawfully, and in addition, the management shall have the right to maintain an action in trespass and for punitive damages against such person.
The criminal penalties and civil remedies provided by the statute are without force or effect unless the management of the theatre shall have posted signs at the box office and at or near the audience entrance to the portion of the theatre wherein the performance is to be presented and printed in any program which may be furnished to the audience for such performance, stating in substance as follows: "WARNING The photographing or sound recording of any performance or the possession of any device for such photographing or sound recording inside this theatre, without the written permission of the management is prohibited by law. Offenders may be ejected and liable for damages and other lawful remedies."
The statute prohibits, inter alia, the taking of photographs or making of sound recordings of any performance presented in a theater "without having first obtained the written consent of the management to do so." Remedies for the management include bringing an action for an injunction, an accounting, or for damages resulting from or in respect of any photographs or sound recordings of any performance made without the consent required or resulting from or in respect of any distribution or attempted distribution of any such photographs or sound recordings or reproductions thereof.
Further, the statute provides that management shall have the right to request and obtain possession of photographic or sound recording devices until the conclusion of the performance. Failure by any person admitted or seeking admission to a theatre in which a performance is to be or is being presented, refuses or fails to give or surrender possession of any photographic or sound recording device which such person has brought into or attempts to bring into such theatre without having first obtained the written consent of the management to do so, then the management shall have the right to remove such person therefrom or refuse admission thereto to such person, and shall thereupon offer to refund and, unless such offer is refused, refund to such person the price paid by such person for admission to such theatre.
If such person refuses to leave such theatre after having been informed by the management thereof that possession of any photographic or sound recording device in such theatre without the written consent of the management is prohibited, then such person shall be deemed to be remaining in the theatre unlawfully, and in addition, the management shall have the right to maintain an action in trespass and for punitive damages against such person.
The criminal penalties and civil remedies provided by the statute are without force or effect unless the management of the theatre shall have posted signs at the box office and at or near the audience entrance to the portion of the theatre wherein the performance is to be presented and printed in any program which may be furnished to the audience for such performance, stating in substance as follows: "WARNING The photographing or sound recording of any performance or the possession of any device for such photographing or sound recording inside this theatre, without the written permission of the management is prohibited by law. Offenders may be ejected and liable for damages and other lawful remedies."
There are no reported cases under this statute.
August 14, 2013
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:
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.
August 8, 2013
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.").
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.").
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