Beckett v. Urban et al., No. 15-cv-1407 (C.D. Cal. dated July 6, 2015).
A trademark infringment and dilution claim against country music star Keith Urban, concerning the mark PLAYER, was dismissed on the pleadings. The Court found that plaintiff’s mark of “PLAYER” and Defendant s’ mark “Player by Keith Urban” are not sufficiently similar. Defendants use of the phras e “by Keith Urban” clearly denotes that Keith Urban is the good’s source, dispelling any potenti al confusion with Plaintiff’s band “PLAYER.” Further, the Court found that Plaintiff’s and Defendants’ goods and servicees are not closely re lated. Plaintiff’s trademark is for audio and video recordings featuring music and artistic performances by a rock band and for entertainment services in the nature of live audio performances by a rock band. Defendants are marketing a guitar and guitar lesson kit complete with audio a nd video recordings that teaches a consumer to use and play guitar. As to the dilution claim, Plaintiff failed to allege that his mark is sufficiently famous.
July 9, 2015
July 8, 2015
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.
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.
June 23, 2015
Florida Court Rejects Pre-72 Sound Recording Rights in Turtles/Sirius Case; Contrary To NY and CA Decisions
Flo & Eddie, Inc. v. SiriusXM, No. 13-23182-CIV-GAYLES/TURNOFF (S.D. Fla. dated June 22, 2015).
A Florida federal court granted defendant Sirius summary judgment as to liability on plaintiff Flo & Eddie's (the Turtle's) common-law copyright infringement claims, although New York and California courts have found differently. The Florida federal court observed that Florida is different from New York and California, inasmuch as as there is no Florida legislation covering sound recordings nor is there a bevy of case law interpreting common law copyright related to the arts. "The Court finds that the issue of whether copyright protection for pre- 1972 rec ordings should include the exclusive right to public performance is for the Florida legislature." Accordingly, the Court found that Florida common law did not provie plaintiff with the exclusive right of public performance in the Turtles' sound recordings. Further, the Court found that back-up and buffer copies made by Sirius were not unlawful reproductions. Because the Court found that Sirius had not infringed any of Plaintiff's copyrights, the Court also dismissed plaintiff's related claims for unfair competition, conversion and civil theft (all of which were based on alleged copyright infiringement).
A Florida federal court granted defendant Sirius summary judgment as to liability on plaintiff Flo & Eddie's (the Turtle's) common-law copyright infringement claims, although New York and California courts have found differently. The Florida federal court observed that Florida is different from New York and California, inasmuch as as there is no Florida legislation covering sound recordings nor is there a bevy of case law interpreting common law copyright related to the arts. "The Court finds that the issue of whether copyright protection for pre- 1972 rec ordings should include the exclusive right to public performance is for the Florida legislature." Accordingly, the Court found that Florida common law did not provie plaintiff with the exclusive right of public performance in the Turtles' sound recordings. Further, the Court found that back-up and buffer copies made by Sirius were not unlawful reproductions. Because the Court found that Sirius had not infringed any of Plaintiff's copyrights, the Court also dismissed plaintiff's related claims for unfair competition, conversion and civil theft (all of which were based on alleged copyright infiringement).
June 16, 2015
Third-Party Service Provider Subject To "Grooveshark" Injunction
Arista Records, LLC v. Tkach, No. 15-CV-3701 (AJN), 2015 BL 182234 (S.D.N.Y. June 03, 2015).
A third-party service provider is bound by and subject to the TRO and preliminary injunction in the Grooveshark case, finds Judge Nathan in the Southern District of New York. The Court concluded that CloudFlare wasin active concert or participation with the Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the authoritative domain name server for the new Grooveshark sites, which connects users entering the Grooveshark domain names into a web browser to the specific IP address associated with that site; (2) CloudFlare provides other services designed to improve the performance of the new Grooveshark sites; and (3) CloudFlare began providing its services to grooveshark.li after it acknowledged receipt of the TRO. Furthermore, for the purpose of determining whether CloudFlare is in active concert or participation with the Defendants, it is not determinative that CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare was bound by the TRO and is now bound by the existing preliminary injunction.
A third-party service provider is bound by and subject to the TRO and preliminary injunction in the Grooveshark case, finds Judge Nathan in the Southern District of New York. The Court concluded that CloudFlare wasin active concert or participation with the Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the authoritative domain name server for the new Grooveshark sites, which connects users entering the Grooveshark domain names into a web browser to the specific IP address associated with that site; (2) CloudFlare provides other services designed to improve the performance of the new Grooveshark sites; and (3) CloudFlare began providing its services to grooveshark.li after it acknowledged receipt of the TRO. Furthermore, for the purpose of determining whether CloudFlare is in active concert or participation with the Defendants, it is not determinative that CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare was bound by the TRO and is now bound by the existing preliminary injunction.
Beastie Boys Awarded Attorneys Fees For Copyright Infringement, But Reduced Amount
Beastie Boys v. Monster Engergy, 1:12-cv-06065-PAE (SDNY filed 06/15/15) [Doc. 216].
After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional". Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.
After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional". Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.
June 4, 2015
Big Pimpin Suit Continues With Triable Issues Of Fact
Fahmy v. Jay-Z et al., No. 2:07-cv-05715 (C.D. Cal. May 27, 2015).
In the copyright infringement action concerning Jay-Z's song Big Pimpin', the Court denied plaintiff's motion for partial summary judgment seeking to dismiss defendant's "license" affirmative defense. The Court concluded that there were triable issues of fact as to whether plaintiff conveyed any performance rights he owned in the infringed song. The Court also concluded that there was a genuine dispute of material fact as to whether defendants received a license to publicly perform the song as part of Big Pimpin' through their asserted chain of title or as a result of BMI blanket licenses.
In the copyright infringement action concerning Jay-Z's song Big Pimpin', the Court denied plaintiff's motion for partial summary judgment seeking to dismiss defendant's "license" affirmative defense. The Court concluded that there were triable issues of fact as to whether plaintiff conveyed any performance rights he owned in the infringed song. The Court also concluded that there was a genuine dispute of material fact as to whether defendants received a license to publicly perform the song as part of Big Pimpin' through their asserted chain of title or as a result of BMI blanket licenses.
May 28, 2015
Class Certification Granted In Turtles' Pre-'72 Copyright Case Against Sirius
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-5693 (C.D. Cal. 5/27/2015).
In the copyright infringement action against Sirius satellite radio alleging copyright infringement of pre-1972 sound recordings, the the District Court granted plaintiff's motion for class certification. Under Fed. R. Civ. P. 23, the plaintiff must establish certain requirements that are often referred t as numerosity, commonality,
typicality, adequacy, predominance, and superiority.
As a threshold matter, the Court found Defendants' argument unpersuasive that class certification was improper because there had already been a finding of liability at summary judgment as to the named plaintiffs. Sirius argued that class certification would violate "the one-way intervention rule", which is the intervention
of a plaintiff in a class action after an adjudication favoring the class has taken place. Such intervention is termed ‘one way’ because the plaintiff would not otherwise be bound by an adjudication in favor of the defendant occurring at that point in the litigation. The Court found that Sirius had waived the protection of this rule because Sirius XM requested early summary judgment briefing, failed to raise a firm pre-judgment objection to Plaintiff's motion, and actually decided to adopt Plaintiff's motion as its own early liability decision vehicle.
The Court then turned to the Rule 23 class certification requirements. First, it found that class members -- owners of pre-72 sound recordings -- were ascertainable by turning to a number of sources who license such sound recordings, and Sirius has a list of all of the songs it had played. Next, the Court found that the proposed class of hundreds, if not thousands, of owners in sound recordings satisfied the numerosity requirement. Typicality was also satisfied because the members of the proposed class will each claim injury based on Sirius performing their pre-1972 recordings without authorization. Sirius XM’s unauthorized
performance of plaintiff's recordings, the wrongful conduct at issue in this litigation, is not unique to these plaintiffs; rather, it is consistent with Sirius XM’s general practice as to pre-1972 recordings. Next, the Court found commonality and adequacy of the named plaintiff's representation of the class. The Court then considered the remainder of the Rule 23 requirements, and found them satisfied. In short, the Court concluded that a class action is superior to individual litigation to the fair and efficient adjudication of the controversy.
In the copyright infringement action against Sirius satellite radio alleging copyright infringement of pre-1972 sound recordings, the the District Court granted plaintiff's motion for class certification. Under Fed. R. Civ. P. 23, the plaintiff must establish certain requirements that are often referred t as numerosity, commonality,
typicality, adequacy, predominance, and superiority.
As a threshold matter, the Court found Defendants' argument unpersuasive that class certification was improper because there had already been a finding of liability at summary judgment as to the named plaintiffs. Sirius argued that class certification would violate "the one-way intervention rule", which is the intervention
of a plaintiff in a class action after an adjudication favoring the class has taken place. Such intervention is termed ‘one way’ because the plaintiff would not otherwise be bound by an adjudication in favor of the defendant occurring at that point in the litigation. The Court found that Sirius had waived the protection of this rule because Sirius XM requested early summary judgment briefing, failed to raise a firm pre-judgment objection to Plaintiff's motion, and actually decided to adopt Plaintiff's motion as its own early liability decision vehicle.
The Court then turned to the Rule 23 class certification requirements. First, it found that class members -- owners of pre-72 sound recordings -- were ascertainable by turning to a number of sources who license such sound recordings, and Sirius has a list of all of the songs it had played. Next, the Court found that the proposed class of hundreds, if not thousands, of owners in sound recordings satisfied the numerosity requirement. Typicality was also satisfied because the members of the proposed class will each claim injury based on Sirius performing their pre-1972 recordings without authorization. Sirius XM’s unauthorized
performance of plaintiff's recordings, the wrongful conduct at issue in this litigation, is not unique to these plaintiffs; rather, it is consistent with Sirius XM’s general practice as to pre-1972 recordings. Next, the Court found commonality and adequacy of the named plaintiff's representation of the class. The Court then considered the remainder of the Rule 23 requirements, and found them satisfied. In short, the Court concluded that a class action is superior to individual litigation to the fair and efficient adjudication of the controversy.
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