Entertainment Law Matters

The boy band One Direction made history last month when their debut U.S. album “Up All Night” topped the Billboard charts – making them the first U.K. group to launch in the U.S. at Number 1.  Now the newly stateside pop group, which reached celebrity status just as quickly as their CD, is being sued for trademark infringement. 

The complaint, filed in federal court in California on April 9, 2012, lays out the claims of a “California-based pop-rock band” – also named One Direction.  According to the lawsuit, the California group has been using the name One Direction in the U.S. continuously since the fall of 2009.  The suit claims that the California group has performed concerts, maintained websites, posted videos to YouTube, sold music on iTunes, and released an album in February of 2011 titled “The Light,” all under the name One Direction.  On February 14, 2011, the California group filed a trademark application for One Direction with the United States Patent and Trademark Office for “live performances by a musical band.”  The One Direction trademark application published in the Trademark Official Gazette in December of 2011. However, the U.K. group’s manager interrupted the application process by requesting an extension of time to oppose registration.  Currently, the U.S. registration is still being held up by the U.K. group.

The U.K. One Direction formed sometime in 2010 after its members competed together on the British television show “The X Factor.”   At first, they used the One Direction mark exclusively in the U.K.  Since trademark rights are jurisdictional, parallel use of the same name by different music groups in different countries usually will not raise any legal issues.  However, since the U.K. group entered the U.S. in early 2012, there already has been some potential confusion: a song by the California group played during a segment to promote the U.K. One Direction on NBC’s Today show. 

The California group’s suit seeks one million dollars in damages, and a permanent injunction requiring the U.K. group to cease use of the One Direction name.  The complaint names each of the U.K. band members personally, along with Syco Entertainment (a joint venture between Sony and Simon Cowell), Simco Limited (the group’s manager), and Sony Music. 

- Rachel Kronman

One of photographer William Eggleston’s top collectors recently filed a lawsuit seeking to stop the artist from selling larger, digital reprints of some of his best-known, limited edition photographs.  The lawsuit claims that the artist has no right to create these new works, even though they are in a medium that did not exist when he created the vintage prints and are much different in size.

Eggleston is known as a pioneer of color photography.  Some of his most iconic works date from the early 1970s and include images of ordinary and even mundane aspects of American life.  Eggleston recently created larger, digital versions (the “Reprints”) of eight of his most popular photographs and sold them for record prices at auction last month, including $578,500 for a single work. 

Not all of his collectors love these new works.  Last week, Jonathan Sobel, an avid Eggleston collector, filed a lawsuit in federal court in Manhattan against Eggleston and the trustees of his artistic trust.  Sobel owns more than 190 Eggleston photographs and in 2009 sponsored a career retrospective for the artist that was exhibited at the Whitney Museum of American Art. 

In his Complaint, Sobel claims that he owns limited edition copies of each of the eight photographs that were used to create the Reprints.  Sobel alleges Eggleston created these “vintage” prints from photographic negatives or slides.  He claims that his photographs were part of limited editions, which is evidenced by the fact that the prints are individually numbered.  He claims that he bought these prints not from Eggleston himself, but rather from two auction houses and a prominent gallery in the past several years. 

Sobel’s Complaint alleges five claims against the Eggleston defendants: (i) violation of New York statutory law governing the sale of editioned works; (ii) fraudulent misrepresentation against Eggleston only; (iii) negligent misrepresentation; (iv) unjust enrichment; and (v) promissory estoppel.  As damages, Sobel seeks the difference between the value of his collection of Eggleston photographs before and after the Reprint sales.  He also seeks punitive damages, as well as injunctive relief prohibiting the defendants from any future sales of the Reprints or any reprints of other vintage photographs.

Sobel does not allege that any specific market harm for the vintage prints has occurred.  He does not, for example, allege that he recently tried to sell some of his prints, and they failed to sell at historic sales prices.  Rather, Sobel’s case appears to be based on the perceived fear that the existence of additional versions of these images will damage the market for his collection of vintage photographs.  According to Sobel’s Complaint: “the value of Sobel’s photographs from the Limited Editions has been diminished by the very existence of additional copies of the same image now in the art market.”

While the Reprints have garnered record sales figures, it appears that the vintage prints are also faring well.  For example, last month, a poster-sized print of a 1973 photograph depicting a painted sign for “Peaches!” on a tin roof sold at auction for $422,500.  A few weeks later, a vintage print of the same work sold for $242,500.  The price for the vintage photograph was well above the auction estimate of $70,000 to $90,000.  Additionally, that figure is consistent with the historical sales figures for Eggleston’s vintage prints, which according to Sobel’s Complaint range from tens of thousands of dollars to over $250,000 per photograph.

While Eggleston has not yet had an opportunity to defend the lawsuit, according to the Wall Street Journal his lawyer has stated that the case has “no merit.”  Even after selling a work of art, the artist retains the copyright in the image, including the reproduction rights.  According to Eggleston’s attorney, the artist was within his rights to “create new editions in new formats” and no law “prevents an artist from creating additional works with the same image.”  

- Amelia Brankov

The owner of rights to J.R.R. Tolkien’s The Hobbit has threatened legal action against a Hobbit tribute bar in the UK.  Middle-earth Enterprises, a division of the Saul Zaentz Company, alleges the 20+ year-old Southampton bar is infringing the beloved Tolkien novel’s valuable intellectual property.  Middle-earth is demanding The Hobbit pub, decked from door to door in Hobbit regalia, remove all references to the book, which include the name of the pub, wall murals depicting scenes from the story, and cocktails named after the fantasy tales’ characters.  Sir Ian McKellen, who plays Gandalf in the soon-to-be released Hobbit movie, has tweeted his support for the tavern, which has set up “Save The Hobbit” Facebook and Twitter accounts where they now boast some 57,000 fans. 

- Rachel Kronman

Recently, a court in the Southern District of New York granted CBS and Bell–Phillip Television’s motion to dismiss Lanham Act, Unfair Competition, and other claims asserted by the Naked Cowboy.  The Naked Cowboy is a personality and New York City street performer who dresses in a specific and recognizable costume consisting of only briefs, cowboy boots, a cowboy hat, and a guitar.  In addition to his distinctive duds, the Naked Cowboy has a federal trademark registration for the mark NAKED COWBOY.  In his complaint, the Naked Cowboy asserted that CBS and Bell-Phillips appropriated his cowpoke persona when a character on the CBS daytime drama The Bold and the Beautiful appeared for several seconds in only his briefs, cowboy boots and cowboy hat while singing and playing the guitar.  Subsequently, the Naked Cowboy claimed CBS and Bell-Phillips infringed his trademark rights when they posted the Bold and Beautiful clip to YouTube using the tags “naked” and “cowboy” to identify the video, along with the title “The Bold and the Beautiful – Naked Cowboy”, and purchased the YouTube search term “naked cowboy.” The District Court, however, determined that since the Bold and the Beautiful character’s getup did not include several of the distinct characteristics of the Naked Cowboy’s costume, such as the words “Naked Cowboy” “Tips” or a “$”, the Defendants did not make use of the Naked Cowboys distinctive and recognizable costume.  Further, the District Court held that using the separate YouTube tags “naked” and “cowboy” along with purchasing the search term “naked cowboy” did not constitute use in commerce of the registered mark NAKED COWBOY.  For the Court, the only possible use in commerce of Plaintiff’s NAKED COWBOY mark was Defendants’ use of the mark as part of the title of their YouTube video – however, the Court also found this use to be a descriptive, non-trademark use.  

- Rachel Kronman

Last Friday, street artist Shepard Fairey pled guilty to one count of criminal contempt for destroying documents, manufacturing evidence and other misconduct in his civil suit against the Associated Press (“AP”).

In the Fairey-AP case, the AP claimed that Fairey and his licensee Obey Clothing committed copyright infringement by using an AP photograph of then-Senator Barack Obama on posters and apparel without crediting or compensating the AP.  That case settled last year. Continue reading »

On January 7, 2012, singer Beyoncé Giselle Knowles (known professionally as “Beyoncé”) and her husband, rapper and record producer Shawn Corey Carter (known professionally as “Jay-Z”), gave birth to their first child, a daughter named Blue Ivy Carter.  Beyoncé’s pregnancy and the arrival of Blue Ivy received an enormous amount of public attention.  There were stories about the lavish suite and extensive security afforded to her parents at the New York hospital blessed with this blessed event as well as that Blue Ivy’s cries were included on Jay-Z’s new track “Glory” (which quickly made the Billboard R&B/Hip Hop songs chart making her the youngest performer ever to hit the charts). Continue reading »

A controversial federal rule on the preservation of electronic documents pending litigation has just been adopted by a New York State appellate court in Voom HD Holdings LLC v. Echostar Satellite LLC, 2012 NY Slip Op. 00658 (App. Div. 1^st Dep’t Jan. 31, 2012), a dispute between a television programming provider and a direct broadcast satellite television service.  The Voom decision represents the first time a New York appellate court has followed the rule articulated in Zubulake v. UBS Warburg LLC, 220 F.R.D. 212, 218 (S.D.N.Y. 2003), in which the federal district court stated:  “Once a party reasonably anticipates litigation, it must suspend its routine document retention/destruction policy and put in place a litigation hold to ensure the preservation of relevant documents.”  As Voom demonstrates, this may require in-house and outside counsel to put litigation holds in place even before litigation actually begins – or face the consequences. Continue reading »

On January 11, the Velvet Underground (“VU”), a business entity formed by the rock group “The Velvet Underground,” filed suit against the Andy Warhol Foundation for the Visual Arts, Inc. (the “Warhol Foundation”).  VU alleges that the Warhol Foundation committed trademark infringement by licensing the use of the emblem the group believes is its signature, the banana.  The band had used the allegedly iconic mark on its first album, The Velvet Underground and Nico, published by MGM Records in 1967. Continue reading »

Last Wednesday’s Internet protest appears to have revolutionized the debate over the PIPA and SOPA bills in the halls of Congress.  In response to Web sites’ strong opposition to the bills, important lawmakers have withdrawn their support.  And Christopher Dodd, the chairman of the Motion Picture Association of America, which is the force behind the bills, is considering meeting with the Internet and content companies to discuss a compromise.  Most significantly, last Friday, Representative Lamar Smith (R-Tex.), chief sponsor of the PIPA bill, pulled the bill from consideration in the House.  In the Senate, Sen. Harry Reid (D-Nev.), indefinitely postponed the Senate’s cloture vote (a vote that would place a time limit on the consideration of the SOPA bill) that would have taken place today, and which has been viewed as the nail in the coffin for the current version of the law.

- Beth Goldman

Today, the Internet is on strike over two bills in Congress, the Stop Online Piracy Act (Senate bill) and the Protect IP Act (House bill), which are aimed at controlling the illegal downloading and streaming of television shows and movies online.  Major media companies are backing the bills, hoping to fight piracy by implementing measures like cutting off sales of ads to piracy suspects and delisting them from search engine results.  But the technology industry is concerned that the protections may go too far, imposing enormous regulatory costs, and stifling web innovation.  In protest, Google and many other sites will point visitors to Web sites describing their opposition to the bills and encouraging users to support their cause by signing petitions or writing to Congressional representatives.  Others, like Wired have redacted the text of their sites to make their statement.  Wikipedia is going even further – the site will be dark for a full 24 hour period.

- Beth Goldman