Every year the NFL’s trademark attorneys aggressively send cease and desist letters to business using the term “Super Bowl,” threatening them with the trademark law equivalent of traumatic brain injury. Even churches are not granted sanctuary from NFL’s trademark and copyright infringement tentacles. Instead of battling for immunity under trademark fair-use laws, many businesses and advertisers engage in vocabulary gymnastics, e.g. Big Game, Super Sunday, to avoid the NFL’s trademark onslaught. The NFL even tried to prevent use of “The Big Game” by filing a USPTO trademark application, but the NFL was forced to abandon its trick-play when numerous colleges and businesses opposed the application. Thus, to avoid legal expenses, many businesses choose to forego the battle. But not Stephen Colbert, whose Superb Owl moniker flies below the NFL’s trademark radar:
This is not your ordinary trademark infringement case. It involves Grammy Awards ceremony tickets, allegedly sold by now ex-Recording Academy member and trademark attorney – Matthew Blakely – to alleged swindler and trademark infringer Craig Banaszewski.
The dispute stretches back to 2012 when the Academy informed defendants that tickets to the Grammy awards were private, invitation only events and any unauthorized transfer or sale of the tickets was unlawful, would automatically void the tickets, and the ticket-holders would be deemed trespassers. Defendants complied with the Academy’s take-down requests and the issue appeared resolved.
In 2013, however, attorney Blakely reportedly sold his non-transferable tickets for between $65,000 and $89,500. But when the purchasers were denied entry, they sued Blakely after he refused to refund their money. Blakely informed the Hollywood Reporter that Banaszewski claimed he was obtaining tickets to revive 80’s and 90’s rock bands’ careers and Grammy appearances would be helpful. According to the Hollywood Reporter, “Blakely says he initially declined but then reconsidered after the guy ‘reiterated interest in potentially funding the film projects for Blakely Legal clients.’”
Yesterday, the Recording Academy sued Banaszewski and Hollywood Entertainment Group, the operators of www.thevipconceirge.com, for trademark infringement, copyright infringement, false association and unfair competition, interference with contractual relationships, unfair or deceptive acts, and inducement of trespass. The Academy alleges Defendants are once again selling unauthorized tickets on their website for the February 8, 2015 Grammy Awards ceremony by using the Academy’s MUSIC’S BIGGEST NIGHT® and GRAMMY® trademarks. Further, Defendants are accused of copyright infringement for their unauthorized use of the Gramophone Logo, which is registered with the U.S. Copyright Office, and photographs from prior Grammy Awards ceremonies.
The suit seeks unspecified damages, but demands punitive damages for defendants' alleged misconduct.
The case is National Academy of Recording Arts & Sciences, Inc. v. Hollywood Entertainment Group LLC, et al. CV15-0594 (C.D. Cal. 2015).
Sam Smith's hit song "Stay With Me" was reportedly the subject of a copyright dispute with Tom Petty claiming that it infringed his "I Won't Back Down" hit song. Here's a third party's analysis and comparison of the two songs:
The Rolling Stone reports that the parties have "quietly and amicably settled" the copyright dispute and Tom Petty and co-author Jeff Lynne will now be credited as songwriters on Smith's "Stay With Me." As for copyright royalties, Rolling Stone reports that it's "unclear whether Petty and Lynne were retroactively compensated for their songwriting credit or if they'll receive future earnings on the track."
The U.S. music sub-publisher of Korean music publishers has filed copyright infringement lawsuits against several karaoke bars in Los Angeles and Korea town. I’m not sure how popular the 80’s glam-metal-hair-band Ratt is in Korean karaoke bars, but it is also suing for infringement of its “Round and Round” song. The complaints allege that Defendants charge customers money for access to the karaoke machines, the primary feature of the bars for which customers pay Defendants, and illegally publicly perform the copyrighted musical compositions embodied in the karaoke recordings.
Ratt’s single composition pales in comparison to Elohim’s assertion that 3,341 musical compositions have been infringed by the karaoke bars, but as explained below Ratt is afforded more remedies under the Copyright Act. Both plaintiffs allege that the bars have not been granted public performance licenses for the compositions under 17 U.S.C. § 106(4) of the Copyright Act.
Each of the Elohim Compositions constitutes copyrightable material and is protected under the Berne Convention for the Protection of Literary and Artistic Works (the “Berne Convention”). The Berne Convention affords the Elohim Compositions, which were published in Korea and are owned by Korean citizens, automatic copyright protection in the United States; in this regard, there is no requirement that the Elohim Compositions be registered with the U.S. Copyright Office prior to the initiation of this lawsuit.
Unlike the foreign copyright holders, Ratt asserts that it properly and timely recorded its musical composition with the US Copyright Office. Thus, Ratt is entitled to elect between statutory damages under 17 U.S.C. §504(c) and its damages and Defendants profits, in addition to attorney’s fees and costs under Section 505. Rudnicki v. WPNA 1490 AM, 580 F.Supp.2d 690, 694 (N.D.Ill.2008) ( “Registration is only a prerequisite when the foreign copyright holder seeks statutory damages and attorney's fees.”). Elohim, on the other hand is only entitled to actual damages and Defendants’ profits, which are sometimes more challenging to prove and might be less than the minimum statutory award.
PRACTICE NOTE: Foreign copyright holders with substantial business in the United States should obtain U.S. copyright registrations to avail themselves of all remedies under the Copyright Act.
Some of the cases are:
Elohim EPF USA, Inc. v. Doballo, Inc., et al., CV14-05425 JAK (C.D. Cal. 2014)
Elohim EPF USA, Inc. v. Rosen Group, Inc., et al., CV14-05439 (C.D. Cal. 2014)
Elohim EPF USA, Inc. v. JSP Venture, Inc., et al., CV14-05455 (C.D. Cal. 2014)
Kendrick Lamar’s hit song “Rigamortus” may be DOA because he is accused of blatantly copying the music from “The Thorn.” Composer, musician, and recording artist Eric S. Reed composed “The Thorn” in 2009 for Willie Jones III’s 2010 recording The Next Phase (WJ3). Reed is the owner of U.S. Copyright Registration No. Pau 3-682-265 in the composition and Jones is the owner of U.S. Copyright Registration No. SR0721860 in the sound recording.
Plaintiffs deny granting Kendrick Lamar permission to use “The Thorn” in any manner, including the numerous versions and remixes which also incorporate Plaintiffs’ original sound recordings.
“The Thorn” is not merely a part of “Rigamortus” or even the heart of “Rigamortus”; it is “Rigamortus”. The distinctive and catchy refrain from “The Thorn” sound recording, sped up a bit, repeats as a continuous loop throughout the entire “Rigamortus” song while Lamar raps over it. The clever melodic triplets, infectious rhythm, and commanding horns from “The Thorn” are copied to “Rigamortus” directly from Jones’ sound recording. Defendants did not play any instruments or contribute any original musical performance to the “Rigamortus” sound recording. The instrumental element of “Rigamortus” and the composition that it embodies are owned and authored entirely by Jones and Reed respectively.
Listen and let your ears be the judge:
Eric Reed and Willie Jones’ The Thorn:
Kendrick Lamar’s Rigamortus:
To establish copyright infringement, Plaintiffs must prove (1) ownership of a valid copyright, and (2) copying by defendants of protectable elements of the work. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). Here, in the age of let’s record and upload everything we do to YouTube, Plaintiffs allege that co-defendant William T. Brown’s YouTube video demonstrates how he “created” Rigamortus, showing his computer monitor where the words “Willie Jones III The Thorn” are clearly visible. It is rare to catch a copyright infringer red-handed, but this might be one of those rare instances.
Plaintiffs seek at least $1,000,000 in damages and full disgorgement of Defendants’ profits from the infringement. In addition to seeking an injunction, Plaintiffs demand payment of all their attorneys’ fees and costs.
The case is Eric S. Reed, et al. v. Kendrick Lamar Duckworth, et al., CV14-5064 (N.D. Ill. 2014).
Levi Strauss & Co. has been making jeans forever and owns some of the earliest trademarks registered at the U.S. Patent & Trademark Office. The trademarks at issue involve Levi’s two-horses pulling on a pair of jeans design, one of which (pictured to the right) Levi’s began using in 1886 and registered in 1980. Levi’s contends that its two-horse design trademarks are famous and recognized around the world based on Levi’s extensive marketing and volume of sales for over one-hundred years.
Stussy is accused of using a two-horse design trademark on a leather patch affixed to jeans and shirts that is confusingly similar to Levi’s registered trademarks. Based on the similarity of the two design trademarks, it’s not surprising that Levi’s is steaming up Stussy’s tail. Levi’s alleges the striking similarity of the trademarks can only lead to one conclusion: that Stussy’s infringement is will and intentional, thereby warranting trebling the amount of Levi’s damages and Stussy’s profits. Levi’s seeks unspecified damages, but requests an award of its attorneys’ fees in addition to an injunction prohibiting Stussy’s use of the two-horse design trademark.
Although there appear to be no opposed decisions involving Levi’s two-horse design trademark, Levi’s has successfully litigated and prevailed on its back-pocket stitching design trademarks. See e.g. Lois Sportswear, USA, Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir.1986). This should be an extremely quick horse race to the finish, i.e. settlement.
The case is Levis Strauss & Co. v. Stussy, Inc., CV14-02995 HRL (N.D. Cal. 2014).
Seeking at least $3 million in damages, songwriters Lee Oskar Levitin, Greg Errico, and Keri Oskar are suing Sony Music and Pitbull’s company for copyright infringement over his smash hit “Timber,” featuring Kesha. The duo’s popular song with a country twang is accused of unabashedly sampling the melody and harmonica riff from Plaintiffs’ 1978 hit “San Francisco Bay.”
Listen to the songs below and you be the judge.
San Francisco Bay
Pitbull and Kesha’s Timber
It’s pretty clear that Timber uses San Francisco Bay’s harmonica riff and melody, which is specifically mentioned in Timber’s Wikipedia page, going as far as stating that harmonica player, Paul Harrington, was told to emulate plaintiff Lee Oskar’s harmonica playing style. It’ll be interesting to see if San Francisco Bay was licensed from another rights holder without Plaintiffs’ knowledge.
The case is Lee Oskar Levitin, et al. v. Sony Music Entertainment, et al., 14-CV-04461 PAC (S.D.N.Y. 2014).
In a trademark infringement and counterfeiting lawsuit, Manolo Blahnik is asking the court to transfer control of websites selling counterfeit Manolo Blahnik shoes and accessories and to freeze Defendants' assets and bank accounts. The identities of the defendants and the websites are currently sealed to prevent advanced notice to the accused defendants, who may use the information to transfer or conceal assets. The complaint alleges that Defendants create internet stores by the hundreds and design them to appear to be selling genuine products, while actually selling low-quality counterfeit Manolo Blahnik products to unknowing consumers. “Internet websites like the Defendant Internet Stores are estimated to receive tens of millions of visits per year and to generate over $135 billion in annual online sales.” Manolo Blahnik claims it is forced to file these actions to combat Defendants’ counterfeiting of its numerous USPTO registered trademarks, as well as to protect unknowing consumers from purchasing counterfeit products over the Internet.
Manolo Blahnik asserts that its trademarks are so famous that it has become a fabric of pop culture, whereby its shoes have been featured on many television shows including Sex and the City where Carrie Bradshaw begged a mugger to “take my Fendi handbag, my ring and my watch, but please don’t take my Manolo Blahniks!” Accordingly, Plaintiff does not wish defendants’ websites to steal Manolo Blahnik’s goodwill created over the years with its consumers and requests the Court – without prior notice to defendants – to issue:
(1) a temporary restraining order against Defendants temporarily enjoining the manufacture, importation, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products; (2) an order temporarily transferring Defendants’ Domain Names to Manolo Blahnik so they can be disabled; (3) an order temporarily restricting transfer of Defendants’ assets to preserve Manolo Blahnik’s rights to an equitable accounting; (4) an order for expedited discovery allowing Manolo Blahnik to inspect and copy Defendants’ records relating to the manufacture, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products and Defendants’ financial accounts; and (5) an order allowing service by electronic mail and electronic publication at the Defendant Domain Names.
Plaintiff also alleges that several Defendants’ websites utilize Manolo Blahnik trademarks in their domain names, which constitutes cybersquatting because each defendant (1) has a bad faith intent to profit from the mark; and (2) registers, traffics in, or uses a domain name that … is identical or confusingly similar to or dilutive of a mark that is distinctive or famous. 15 U.S.C. § 1125(d).
The suit seeks unspecified monetary damages, but requests an award of Defendants’ profits, which should be trebled pursuant to 15 U.S.C. § 1117 because defendants intentionally and willfully infringing on Manolo Blahnik’s famous trademarks.
The case is Manolo Blahnik Int’l, Ltd v. The Partnerships and Unincorporated Associations, 14-CV-4174 (N.D. Ill 2014).
There’s no smoke, but a federal trademark lawsuit fire is burning between Starbuzz Tobacco and The Hershey Chocolate Company. The trademark lawsuit is in response to Hershey’s Trademark Trial & Appeal Board (“TTAB”) opposition to Starbuzz’s trademark application for Citrus Mist for use on e-cigarette flavored liquids. In the TTAB opposition, Hershey contends that Starbuzz’s Citrus Mist trademark is likely to cause consumer confusion with Hershey’s Citrus Mist® trademark registration covering breath mints and candy. Hershey alleges that “consumers are highly likely to associate [Starbuzz’s] chemical flavorings with the flavors of Hershey’s CITRUS MIST brand candy and mints, and make purchasing decisions based on that association.”
Starbuzz’s lawsuit seeks the court’s determination that its Citrus Mist trademark for e-cig flavoring does not infringe or dilute Hershey’s similar trademark. Starbuzz is already the owner of a federally registered Citrus Mist® trademark for pipe tobacco and flavored tobacco, which it has been using since 2008. Starbuzz reasons that the absence of any instances of actual confusion over the last six years between the parties’ respective Citrus Mist trademarks supports its conclusion that expansion into the related e-liquid market for e-cigarettes would not result in confusion and, thereby, infringement. Additionally, Starbuzz argues that labels of the respective products are “completely different” and easily allow consumers to differentiate between the two products and would not lead to confusion.
Regarding the dilution claim, Hershey would have to show that its Citrus Mist trademark was famous before Starbuzz’s adoption of its Citrus Mist trademark. Thane Int‘l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (holding that dilution protection extends only to those whose mark is a – nationally recognize household name); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004) (ruling that survey evidence of sixty-five percent of the attitude of people who intended to purchase a new car recognized the NISSAN trademark coupled with promotional expenditures of $898 million during the period 1985–91 were not conclusive to support – as a matter of law – at summary judgment that the NISSAN trademark was famous as of 1991). Starbuzz contends Hershey’s Citrus Mist trademark is not widely recognized by the general consuming public, which in comparison to Hershey’s Kisses® trademark, I would have to agree.
The case is Starbuzz Tobacco, Inc. v. Hershey Chocolate & Confectionery Corp., CV14-00831-CJC-AN (C.D. Cal. 2014).
Plaintiff Dennis Morris is a renowned photographer and artist well known for his photographs of musicians and cultural icons. Morris is the owner of all copyrights in photographs he took of musicians Sid Vicious and John Lydon of The Sex Pistols band. Morris filed a copyright infringement lawsuit against artist Elizabeth Peyton and retailer Target for unauthorized use of the photographs in creating derivative artwork reproduced on merchandise sold throughout the United States. A side by side comparison of Morris’ photographs and the accused artwork is provided below:
The complaint seeks unspecified damages, but seeks “disgorgement of each Defendant’s profits directly and indirectly attributable to said Defendant’s infringement of the Subject Photographs” in addition to attorneys' fees and costs.
To establish copyright infringement, Morris must prove (1) ownership of a valid copyright, and (2) copying by defendants of protectable elements of the work. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). Where, there is no direct evidence of copying, the second element requires plaintiff to prove both that the defendants had access to the plaintiffs copyrighted work and that there is substantial similarity of protected expression between the copyrighted work and defendants work. Three Boys Music Corp., 212 F.3d at 481. Morris’ photographs are ubiquitous and a Google image search for "The Sex Pistols" produces the subject photographs in the results. Further, where the accused works are strikingly similar – e.g., reproduction of the artwork from the photographed shirt in the accused work, access may be automatically established. Three Boys Music Corp., 212 F.3d at 485 (even where there is no proof of access, the copyright holder may prove copying by showing that the copyright holder’s and alleged infringer’s works are “strikingly similar.”)
Plaintiff is represented by copyright litigators at the Linde Law Firm.
The case is Morris v. Target Corporation, et al., CV14-04010 (C.D. Cal. 2014).