A New Business Model for Musicians

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PandoDaily examines the non-traditional music career of Scott Hansen, better known as the electronic artist Tycho, and the various ways that technology and consumer preferences have changed the business model for the music industry.  Tycho's story illustrates the new possibilities for a successful music career that exist in an industry that has seen seismic changes in the past few years.  It also underscores the importance of understanding copyright and ownership issues for musical artists, as well as the potential perils of signing contracts without a clear understanding of their provisions and effects.  Read the full article here.

By migster14 (originally posted to Flickr as Trinity) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By migster14 (originally posted to Flickr as Trinity) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from PandoDaily.

Instagram in Stagrâm

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The Domain Magnate blog has a post illustrating one of the major problems faced by trademark owners online—the unauthorized registration by third parties of derivative internet domain names incorporating the trademarked term.  In clear cases of unauthorized use or misappropriation of a registered trademark, the trademark owner has several means available to force the infringing user to take down or relinquish the domain, such as ICANN's Uniform Domain Name Dispute Resolution Policy.  However, as Instagram recently learned, some defenses are more creative than others.

Instagram sent a cease and desist letter to the owner of the domain slutsofinstagram.com on the grounds that the domain appears to incorporate the registered INSTAGRAM trademark, and appears to be used in a manner that infringes, dilutes, and tarnishes the reputation of the INSTAGRAM mark.  The domain owner responded in epic fashion by explaining that slutsofinstagram was, of course, actually Slütsof in Stagrâm, “an online fantasy series about a princess duck named Slütsof and her adventurous journey across the mystical lands of Stagrâm.”  Slütsof is apparently on a quest to find her long-lost brother Whöresof, whose own adventures are chronicled in the companion series Whöresof In Stagrâm, conveniently located at whoresofinstagram.com.  Slütsof and Whöresof are still awaiting Instagram’s next move.  Read the full article here.

Reposted from Domain Magnate.

James Cameron Wins Avatar Copyright Lawsuit

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As reported by JD Supra, a copyright infringement lawsuit against filmmaker James Cameron over the blockbuster film Avatar was dismissed last week by the U.S. District Court for the Southern District of New York.  The case, Dean v. Cameron et al., was brought by William Dean, a noted visual artist, who claimed that some of the imagery and visual elements of the fictional world Pandora were copied from his works.  In the opinion dismissing the case, the Court held that “Plaintiff cannot show that a substantial similarity exists between Avatar and the copyrightable elements of Plaintiff’s artworks,” because “no average lay observer would recognize Avatar as having been appropriated from the copyrighted work.”  The opinion provides a useful overview of the boundaries of copyright protection, and of the well-established legal principle that “not all copying results in copyright infringement”; as the Court notes, “many Hollywood movies take their inspiration from other movies or works — or go even further — without running afoul of the Copyright Act.”  Read the full article here, and the Court’s opinion here.

By broddi [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

By broddi [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from JD Supra.

Dueling Ukeleles

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BBC News reports that The Ukulele Orchestra of Great Britain is engaged in a trademark dispute with The United Kingdom Ukulele Orchestra.  The former group, which has been performing for nearly three decades, is seeking to prevent the latter group, formed in 2009, from using what the former considers to be a confusingly similar professional name.  The story serves as a cautionary tale for musicians, bands, and performing acts of all types, and highlights the fact that securing trademark protection for your stage name can be a critical step in maintaining your professional reputation (and averting a full-scale ukelele melee).  Read the full article here.

By Eve (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], via Wikimedia Commons.

By Eve (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], via Wikimedia Commons.

Reposted from BBC News.

The Turtles and Their Royalties Are Happy Together

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The Music Technology Policy Blog has an informative, if less than impartial take on this week’s summary judgment ruling for the plaintiff by the U.S. District Court for the Central District of California in Flo & Eddie Inc. v. Sirius XM Radio Inc., et al., CV 13-5693 PSG (RZx).  The Court ruled that the plaintiff, a corporation that administers the licensing rights for the 1960s band The Turtles, is entitled to back royalties under California state copyright law for pre-1972 sound recordings, which are exempt from federal copyright law.  Because federal copyright law does not include a public performance right or digital performance right for sound recordings made before 1972, defendant Sirius (and other digital broadcasters such as Pandora) have taken the position that no royalties are required for digital transmissions of such recordings.  This argument, know as the “Pandora loophole,” was rejected by the Court, which held that “copyright ownership of a sound recording under [Cal. Civ. Code] § 980(a)(2) includes the exclusive right to publicly perform that recording.”  The ruling is being hailed as a victory for artist’s rights, and for the principle that musicians should be compensated for the use of their pre-1972 works.  Read the full article here, and the court’s Order Granting Plaintiff’s Motion for Summary Judgment here.

By 2bgr8 (File:Money Cash.jpg) [CC-BY-3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

By 2bgr8 (File:Money Cash.jpg) [CC-BY-3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

Redskins v. Native Americans

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The Washington Post has a piece today on the ongoing legal saga between Pro-Football, Inc. and a group of Native Americans over the Washington Redskins name (see prior blog posts on this subject here, here, and here).  Following a June ruling by the Trademark Trial and Appeal Board cancelling all six of the team’s REDSKINS trademark registrations on the basis that the term is disparaging to Native Americans, Pro-Football filed a federal lawsuit against the Native American group that brought the cancellation proceeding against the six trademarks.  The Native American defendants have now filed a motion to dismiss the lawsuit, arguing that Pro-Football’s dispute is with the U.S. Trademark Office, rather than with the defendants, and that a proper remedy would be to simply appeal the TTAB’s ruling.  The defendants also speculate that Pro-Football may have elected to sue them instead of appealing the TTAB ruling in order to avoid the risk of a final judgment from the court in favor of cancellation.  Read the full article here, and the Memorandum of Law in Support of Defendants’ Motion to Dismiss here.

By flickr user dbking [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By flickr user dbking [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from The Washington Post.

Circuit Courts Split on Copyright Fair Use Analysis

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JD Supra has an interesting article on last week’s ruling by the 7th Circuit Court of Appeals in Kienitz v. Sconnie Nation LLC, No. 13-3004, 2014 WL 4494825 (7th Cir. Sept. 14, 2014).  In Kienitz, the 7th Circuit affirmed a summary judgment ruling by the U.S. District Court for the Western District of Wisconsin for the defendant Sconnie Nation, holding that the defendant’s alteration and use of plaintiff Kienitz’s photograph of Madison mayor Paul Soglin was a permissible fair use under the Copyright Act.  Notably, the 7th Circuit criticized and declined to follow the “transformative use” analysis recently adopted by the 2nd Circuit in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013).  As the article notes, while the 2nd Circuit’s “transformative use” analysis has come under criticism before, “Kienitz is the first Circuit-level critique of Cariou” and “represents the genesis of a noteworthy Circuit split on the correct application and significance of a work’s ‘transformative use’ on the fair use inquiry.”  Read the full article here, and the 7th Circuit's opinion here.

By walknboston (Flickr: Gavel) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By walknboston (Flickr: Gavel) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from JD Supra.

Unity and UnityPoint Reach Point of Unity

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In local trademark news, the Wisconsin State Journal reports that the trademark infringement lawsuit filed last December by Wisconsin-based Unity Health Plans Insurance Corporation against Iowa-based UnityPoint Health has been resolved.  According to a joint press release issued by the two companies, “Unity Health Plans Insurance Corporation and UnityPoint Health have resolved the pending trademark litigation.  Both parties are pleased with the resolution and look forward to working together in the future.  Terms of the resolution are confidential.”  Because the terms of the settlement have not been disclosed, it is unclear whether the parties have agreed to a name change by one of the parties, a coexistence agreement, or some other solution that will help to avoid consumer confusion between the UNITY and UNITYPOINT marks.  Read the full article here, and the joint press release here.

Reposted from the Wisconsin State Journal.

What Scottish Independence Could Mean for Trademark Rights

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Against the historic backdrop of today’s vote on Scotland’s independence referendum, World Trademark Review examines the ramifications that Scottish independence could have for trademark and other intellectual property rights in that country.  Because Scotland is currently part of the United Kingdom, it does not have its own intellectual property office; the entire United Kingdom is covered by the UK Intellectual Property Office.  An independent Scotland will need to quickly adopt and implement a new system for IP protection, which would likely entail the establishment of its own IP office, and the ratification of certain international treaties concerning IP rights.  Interesting times may lie ahead for current and future owners of trademark, copyright, and patent rights in the UK.  Read the full article here.

By flickrtickr2009 (Scottish Flag Uploaded by Smooth_O) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons

By flickrtickr2009 (Scottish Flag Uploaded by Smooth_O) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons

Reposted from World Trademark Review.

Today in Copyright History: 9/17

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It’s Constitution Day!  On September 17, 1787, intellectual property rights were woven into the very fabric of American society with the signing of the U.S. Constitution in Philadelphia.  The foundation for modern copyright and patent law was laid in Article 1, Section 8, which provides that “[t]he Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  It remains an open question whether copyright was easier or harder to enforce in the 1700s when the most common tool of infringement was a quill pen.

Etsy Bans the R-Word

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As reported by The Verge, e-commerce website Etsy has instituted a ban on sales of merchandise with the name or logo of the Washington Redskins NFL team.  In a “Policy Update” blog post, Etsy explains that, “[l]ike the Trademark Trial and Appeal Board, we at Etsy find the opinion of the minority group itself to carry most weight in determining whether the mascot is disparaging.  In no uncertain terms, Native American groups have consistently advocated and litigated that the term ‘redskin(s)’ is disparaging and damaging to Native Americans.  Therefore, it will no longer be permitted in our marketplace.”  As noted in the Verge article, Etsy’s sellers are predominantly small businesses and individuals dealing in handmade goods, so it is unclear whether the ban will have a significant effect on the overall market for Redskins goods.  Moreover, given that most, if not all uses of the Washington Redskins name and/or logo on Etsy are likely unlicensed by the trademark owner, such products may already violate Etsy’s policies against trademark infringement.  Read the full article here, and the Etsy policy update here.

redskins_logo.gif

Reposted from The Verge.

Jay-Z Says “Oh” No to Copyright Claim

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Techdirt reports on the pending copyright infringement lawsuit in the Southern District of New York between TufAmerica and rapper Jay-Z over the latter’s use of a sample in his song “Run This Town.”  The issue in the case, TufAmerica, Inc. v. WB Music Corp. et al., is whether a sample of a one-syllable spoken word (the word “oh”) can constitute copyright infringement.  In a motion to dismiss filed last week, Jay-Z’s lawyers argued that a single word does not qualify as copyrightable expression, and that even if that single word was protectable under the Copyright Act, the copying by Jay-Z was too minimal to be actionable.  The case is being watched closely by industry observers for its potential implications for the use of short samples in sound recordings.  Read the full article here, and the Defendant’s Memorandum of Law in Support of Their Motion to Dismiss here.

By Joella Marano (Jay-Z) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

By Joella Marano (Jay-Z) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from Techdirt.

Google It All You Want, It’s Still Not Generic

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The Freedom to Tinker blog has a good post today about Google’s summary judgment win last week in Elliot et al. v. Google Incorporated.  The plaintiffs in that case argued that the GOOGLE trademark has become the generic term for searching the internet (“googling”) without regard to the search engine used, and thus has ceased to identify and distinguish Google’s particular search engine services.  If the GOOGLE mark was deemed generic, it would lose its significance as a trademark, and would take its place alongside aspirin, cellophane, escalator, laundromat, linoleum, thermos, videotape, zipper, and other famous trademarks that fell victim to “genericide.”

Fortunately for Google, the U.S. District Court for the District of Arizona ruled that even if “a majority of the public uses the word google as a verb to refer to searching on the internet without regard to search engine used... the primary significance of the word google to a majority of the public who utilize internet search engines is a designation of the Google search engine.”  Google was therefore entitled to judgment as a matter of law that the GOOGLE mark is not generic, which allows Google to continue to own and enforce the GOOGLE mark, and prevents people like the plaintiffs from using the term google in their own business branding (for similar products or services).  Read the full article here, and the full court opinion here.

Reposted from Freedom to Tinker.

Even Drug Dealers Understand the Power of Branding

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Wired has a fascinating, if somewhat morbid piece on the branding practices of heroin dealers.  While we should not expect to see ® trademark registration symbols on heroin bags any time soon (under 37 C.F.R. § 2.69 and T.M.E.P. § 907, use of a mark in commerce must be lawful use to be the basis for federal registration of the mark), drug dealers appear to recognize that the power of brand identification and loyalty is universal in the marketplace.  But please don’t call Trademarkwise® for advice.  Read the full article here.

By Mpv_51 at English Wikipedia (Transferred from English Wikipedia) [Public domain], via Wikimedia Commons

By Mpv_51 at English Wikipedia (Transferred from English Wikipedia) [Public domain], via Wikimedia Commons

Reposted from Wired.

The APPLE WATCH Watch

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The Wall Street Journal Law Blog examines a stealthy business practice used by Apple and other brand owners to obtain trademark protection for their future product names while effectively keeping such names a secret.  As discussed in The New York Times article from yesterday’s post, Apple was widely expected to call its new smartwatch the iWatch, in keeping with its conventional practice of using “i”-formative product names (iMac, iPhone, iPad, etc.).  However, the company bucked the trend by simply calling the device the Apple Watch.

If Apple had filed an intent-to-use U.S. trademark application for the name APPLE WATCH to reserve the name in advance, the application would have been publicly available for all to see, and the traditional veil of secrecy that cloaks new Apple products prior to their launch would have been lost.  To maintain some level of secrecy while still securing an early filing date, Apple took advantage of the Paris Convention for the Protection of Industrial Property, a treaty between the U.S. and 174 other countries that allows a trademark application filed in one member country to claim priority to an equivalent trademark application filed in any other member country, if the later application is filed within six months of the filing date of the earlier application.

In this case, Apple filed a trademark application for the mark APPLE WATCH in Trinidad and Tobago on March 11, 2014, which allows the company until today, September 11, to file an equivalent U.S. trademark application for APPLE WATCH with an effective filing date of March 11, 2014.  Apple was thus able to wait until after its September 9 unveiling of the Apple Watch to file its U.S. trademark application, relying on the relative obscurity of the Trinidad and Tobago Intellectual Property Office to effectively hide its earlier filing (Apple presumably filed or will file its U.S. application sometime between September 9 and today, but new applications take a few days to publicly appear in the USPTO database).

Apple’s tactic in protecting the APPLE WATCH name highlights some of the strategic options available to brand owners, and demonstrates how the seemingly opposing goals of secrecy and trademark protection can actually work in harmony.  Plus, it provides a perfect excuse to post another picture of the product itself.  Read the full article here.

AplWatch-Hero-Tumble-PRINT.jpg