Entertainment Law Matters

If you are an author, musician, artist, or other creator of intellectual property (or the heir to such a person), it’s a good time to learn whether you are taking full advantage of your ability to “recapture” certain grants of rights made years ago.  While everyone’s business deals are different, we urge you to consider the quick summary below: you may have untapped sources of valuable intellectual property.

The law in brief. To help protect artists and their families from deals that, in hindsight, may not have been optimal, the Copyright Act of 1976 provides that certain persons may terminate grants of copyright interests — including licenses and assignments — after the passage of specified time periods. This means that in certain circumstances, grants such as a license to a publisher of the right to publish a book, a screenwriter’s sale of rights to a movie studio, or a musician’s license of music publishing rights can be terminated irrespective of the terms of any contract. Continue reading »

- Judge slashes jury award in a Jimi Hendrix trademark infringement lawsuit. Recently, a jury awarded Experience Hendrix, LLC, the successor to Jimi Hendrix’s intellectual property rights, a verdict of over $1.7 million, which a federal judge subsequently trimmed down.  As we reported in March, Experience Hendrix sued Hendrixlicensing.com, an online merchant of Jimi Hendrix memorabilia, for trademark infringement, violation of the Washington Consumer Protection Act and violation of Hendrix’s right of publicity.  While the court barred the right of publicity claim on the ground that those rights expired upon the musician’s death, it allowed the other claims to proceed.  Hendrixlicensing.com argued that the jury verdict was not supported by the evidence.  The court agreed, doing away with the damage awards for lost profits, injury to goodwill and injury to reputation.  The court’s opinion noted that the plaintiff had not submitted evidence of its overhead expenses related to lost profits or offered any method of estimating the amount of damage to its goodwill or reputation.  Experience Hendrix walked away with $50,000 for attorney’s fees, plus the leftover damages award of $60,000, and a permanent injunction against Hendrixlicensing.com’s use of its trademarks.

- 50 Cent’s Before I Self Destruct did not infringe book. A New Jersey federal court dismissed a book author’s copyright infringement lawsuit against 50 Cent, ruling that his film Before I Self Destruct and a companion album by the same name did not infringe the plaintiff’s book.  The writer of The Preachers Son–But the Streets Turned Me Into a Gangster accused 50 Cent of poaching from his book.  While the court found that the works shared similar characters, themes, and setting, it dismissed the copyright infringement claim because “a simple viewing of the two works reveals that they are entirely different with respect to plot, mood, and sequence of events.”  The similarities were limited to the generic themes of a difficult upbringing and a life of violence and street crime, as well as the use of clichéd expressions “common in gangster movies and hip hop music.”

- Gergana Miteva

Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141 (CM) (KNF), 2011 WL 3207793 (S.D.N.Y. July 28, 2011).

On July 28, 2011, Judge McMahon of the Southern District of New York granted summary judgment in favor of Marvel and against the children of famed comic book creator Jack Kirby, who passed away in 1994.  As reported in our earlier blog post, Marvel filed the action for declaratory judgment against the Kirby kids after they issued 45 notices to Marvel purporting to terminate, pursuant to Section 304(c) of the U.S. Copyright Act, their father’s assignment of his copyrights in several prized comic books published by Marvel between 1958 and 1963, featuring the adventures of Spiderman, The Fantastic Four, Thor, The Incredible Hulk and The X-Men, among others.  Continue reading »

- John Grisham’s The Firm in a real-life legal drama.  CBS filed a lawsuit against one of its writers, Lucas Reiter, claiming he illegally re-sold to NBC a 2008 TV series pilot script based on John Grisham’s legal thriller The Firm.  Reiter is a freelance writer who has also authored episodes of legal drama series Boston Legal and The Practice.  In its complaint, CBS claims it paid Reiter $250,000 for the exclusive rights to the script, but the writer licensed a “cut-and-paste” version of it to NBC for its upcoming series The Firm, with identical dialogue, plot details, and even camera direction: “[Reiter] expressly acknowledged CBS’s rights to this material and went so far as to ask CBS’s permission to take the project elsewhere.”  CBS is suing the writer for breach of contract and tortious interference with contract.   NBC’s upcoming series is scheduled to premiere later this year and it is rumored to pick up where the 1993 film The Firm, starring Tom Cruise, left off.

- Accused ChrisFarley.com cybersquatter keeps domain name.  A National Arbitration Forum arbitrator has denied an anti-cybersquatting complaint that was brought against the current owner of the chrisfarley.com domain name.  Make Him Smile, Inc. claimed that after the actor’s tragic death in 1997, his family transferred all of its intellectual property rights to it, including the “Chris Farley” mark.  In its complaint, Make Him Smile, Inc. accused the Bahamas-based owner of chrisfarley.com of registering the domain name in “bad faith” – to commercially exploit the comedian’s celebrity by redirecting internet traffic to unrelated commercial websites.  The arbitrator agreed that Chris Farley would have had common law rights to use the “Chris Farley” mark, but that Make Him Smile, Inc. did not establish that Farley’s family transferred the rights to it or that its use was sufficient to establish common law rights.  Farley is best remembered for his roles on Saturday Night Live and Tommy Boy.

- Happy Days cast not appeased by modest checks for multimillion dollar lawsuit.  Lawyers for the four Happy Days cast members, who are suing CBS for over $10 million in unpaid royalties, reported that the actors have received checks between $6,000 and $6,500 each as “payment in full” from the network.  The iconic sitcom’s cast filed a lawsuit in April seeking a cut of the network’s revenue from licensing the actors’ videos, images and voices for merchandise ranging from slot machines to lunch boxes.  “In our view the checks were issued as a PR move so that CBS could say, ‘We paid the actors something,’” the cast’s attorney Jon Pfeiffer said, “The checks will have no impact on the cast’s resolve to obtain what they feel is owed to them, and will continue to pursue their case.” 

- Gergana Miteva

- Don’t mess with the Zohan, Jayms Blonde! The Second Circuit has affirmed a lower court’s copyright infringement ruling in favor of the creators of You Don’t Mess With the Zohan, starring Adam Sandler. Plaintiff Robert Cabel is the creator of a comic book entitled The Hair-Raising Adventures of Jayms Blonde, which the court described as a “light in tone and replete with humor” storyline of a former U.S. Navy Seal who becomes a hairstylist and moonlights as a secret agent. Cabel argued that the movie’s promotional materials featuring Sandler holding a blow dryer pointed to the camera, Sandler’s posture, and the movie’s plotline infringed on his copyrights in the comic book. The court reasoned that the similarity between the posters and the comic book end with striking a fighting pose and “wielding the blow dryer as a weapon,” both of which were deemed unprotectable ideas. The potentially protectable elements of the images, the court pointed out, were dissimilar: one character is holding a weapon disguised as a blow dryer, the other a commonplace blow dryer; one character is facing the viewer with legs spread, the other stands with his right leg forward; and, importantly, the two have different hairstyles and wardrobes. The court also found the storylines to be different – while Jayms Blonde was a gay man hairstylist and secret agent, Zohan was a former Mossad secret agent who became a hairstylist (and a womanizer) to escape his past employ.

- You know you authored a joke when…Jared Edwards, a former assistant to the Wayans Brothers, settled his court case against his former bosses for copyright infringement and breach of contract over their 2009 book 101 Ways To Know You’re A Gold Digger. In his complaint, Edwards charged that the brothers stole his jokes from a manuscript he had proposed to co-publish with them, entitled You Know You Are a Gold Digger When . . . .Edwards claimed that gold-digger jokes in the book such as “Your hands are shaped like money clips” and “[Before you go to] sleep, you count money instead of sheep,” were lifted verbatim from his manuscript. By his lawsuit, he sought a permanent injunction, a percentage of the book’s profits, all copies of the books, and punitive damages. The Wayans brothers claimed Edwards’ copyright registration was fraudulently obtained and that any authorship he claimed was “work for hire” entitling the defendants to whatever work Edwards did within the scope of his employment with them. The Wayans brothers are best known for starring in the comedies “White Chicks” and “Scary Movie.”  Trial was set to begin on July 12, but the parties reportedly settled to the case on the eve of trial.

- $480,000 statutory damage award for infringement of tattoo designs. A Virginia federal court ruled in favor of a tattoo designer in a copyright infringement case. The plaintiff had licensed hundreds of his designs to defendant, an airbrush body art retailer. The court found that defendant breached its licensing agreement with plaintiff when it created derivative designs by changing the colors and ceasing to pay royalties. The sticky point for the court was deciding how many copyright infringements occurred for the purposes of calculating statutory damages. Plaintiff conceded that, to save money on copyright registration, he compiled 24 books of 50 designs each and registered the books, rather than each design. In his complaint, the plaintiff argued that he was entitled to a separate statutory award for each infringed design, amounting to $2 million in damages. However, the court awarded statutory damages for each infringed book, rather than for each infringed design, because the plaintiff sold his work in the same format as he had registered it, suggesting that the books themselves were copyrightable compilations. The Court awarded plaintiff statutory damages in the amount of $20,000 for each of the 24 tattoo books, for a total of $480,000 in statutory damages.

- Righthaven loses another one.Embattled copyright enforcer Righthaven lost yet another copyright infringement lawsuit because of lack of standing and a fair use defense. It is just one in a series of unfavorable decisions for the copyright crusader, which has filed over 200 lawsuits against online bloggers and commentators. This time, the alleged infringer was a Vietnam veteran who posted an entire Las Vegas Review Journalarticle entitled “Public Employee Pensions: We Can’t Afford Them” on an online discussion forum. Righthaven sued on behalf of the copyright owner, Stephens Media, with whom it had a contractual relationship, sharing copyrights and proceeds of damage awards and settlements. While the contract had language suggesting full transfer of rights to Righthaven, the court focused on restrictions on the transfer and Stephens Media’s unilateral right to regain possession at any time. The court concluded that the contract conveyed only “illusory” copyrights: “These carveouts deprive Righthaven of any of the rights normally associated with ownership of an exclusive right necessary to bring suit for copyright infringement…” The court also pointed out that even if Righthaven had the right to sue, it would still lose the case on fair use grounds. The court held that even though the blogger had posted the entire article and the work had some creative elements, he had not used it for commercial purposes, but rather to spur a political discussion, and Righthaven failed to present any evidence that the infringement had an impact on the potential market for the work. The Righthaven cases continue to result in somewhat surprising decisions, including the one in this case that the posting of an entire article was fair use; it appears that judicial distaste for Righthaven’s business model may be driving this type of result.

- Gergana Miteva

- Lady Gaga songwriters in legal scuffle over royalties.  Calvin “Sci-Fidelity” Gaines and Rob Fusari, co-composers of some of Lady Gaga’s mega hits from her album entitled The Fame, are in a $1 million legal battle over royalties and credit for the Lady Gaga songs. The two have worked together since 1997, composing and producing music for Destiny’s Child and Whitney Houston.  But their relationship went sour last year when Fusari purportedly ignored Gaines’s requests to get credit and royalties for the Lady Gaga songs.  In his complaint against Fusari, Gaines claims that Lady Gaga and her production companies have agreed to be bound by the ultimate outcome of the case and compensate him if he comes out victorious.  The Fame has been certified platinum three times and has sold over three million copies in the United States alone.  This is not the first time Fusari finds himself in court over his former girlfriend, Lady Gaga.  Last year, he sued the pop star for $30 million, claiming he discovered her, helped her develop her performance style and came up with her stage name.  The case was eventually settled out of court for an undisclosed amount. 

- Celebrity class action swept under the red carpet. A Los Angeles court dismissed actress Shirley Jones’s right of publicity claims against online celebrity photo licenser, Corbis, finding that she consented to being photographed at red carpet events.   Jones is a well-known stage and film actress (she starred in the filmed versions of Oklahoma! and The Music Man, but perhaps is best known for portraying Shirley Partridge in The Partridge Family, an ABC sitcom about a widowed mother of five who travels with her kids’ pop rock band).  By her complaint, Jones sought to be lead plaintiff in a class action lawsuit, to enable other celebrities whose photos have been displayed on Corbis’s website to join the lawsuit.  The actress accused Corbis of violating her right to control the commercial exploitation of her name, image and likeness, by displaying photographs of her for financial gain.  All of the ten photographs of Jones at issue in the case were taken at high-profile award ceremonies.  The court pointed out that walking on the “red carpet” and posing for photographers is a matter of choice for celebrities, because celebrities are made aware that there are other entrances they can use to avoid the paparazzi.  By making that choice, the court reasoned, Jones effectively consented to the commercial use and exploitation of the images.  The court further noted that a contrary finding would require individual photographers to get express consent from each celebrity.  The decision addresses Jones’s claims against Corbis, but it does not mean that a third party could use her image from one of these red carpet events for commercial purposes.  Any such use could lead Jones to file a new lawsuit.

“A real-life Indiana Jones” accused of being fictitious. Adventurer-turned-philanthropist, Greg Mortenson, is subject to a class action lawsuit accusing him of fabricating his memoir Three Cups of Tea, and of fraudulently styling himself as a “a real-life Indiana Jones” to sell the book.  The lead plaintiff, a Montana lawmaker who read the memoir, questions the facts of the two central narratives in the memoir.  The first is that during a failed attempt to climb K2, Mortenson was inspired by the kindness of the inhabitants of a small Pakistani village to build schools there, which he subsequently did through his charity, Central Asia Institute.  The second is that the Taliban in Pakistan kidnapped him and held him against his will in 1996.  The plaintiff claims the author tricked her into buying a “phony and fictional story,” which she thought was an inspirational memoir, and wrongfully induced her into donating to the Central Asia Institute.  She is asking for disgorgement of the book’s profits and for the book to be marketed as a work of fiction.  This class action lawsuit follows a 60 Minutes exposé on the book, outlining the program’s investigation of its veracity and concluding that Mortenson only visited the Pakistani village a year after he claims to have done so and that most of the schools he purports to have built either do not exist or were built by somebody else.  60 Minutes also broadcasted interviews with Mortenson’s alleged kidnappers who deny belonging to the Taliban and having kidnapped him.  Mortenson has responded to the program on his charity’s website, vehemently denying all accusations.  Three Cups of Tea remained number one on the New York Times best seller list for three years, it has sold over 4 million copies and it has been translated into 47 languages.

 - Gergana Miteva

- False authorship lawsuit hits West Publishing in the pocket parts.  Recently, two law professors successfully sued West Publishing (Thomson Reuters Legal) for defamation after the publisher falsely attributed to them authorship of a pocket part treatise update.  While Professors David Rudovsky and Leonard Sosnov had in fact authored the treatise and several annual updates after that, they had refused to write the update in question because West had reduced their compensation.  After a jury trial, the plaintiffs each received $90,000 in damages and $2.5 million in punitive damages.  A Pennsylvania district court subsequently denied West’s motion notwithstanding the verdict, but did reduce the punitive damages award to $110,000 each because there was no jury finding that West acted with malice.  The court order requires West to choose between either accepting the revised award, or pursuing its motion for a new trial, but not both.

- ASCAP appeals to Supremes for review of “public performance” decision.  The American Society of Composers, Authors and Publishers (“ASCAP”) petitioned the Supreme Court to review the Second Circuit Court of Appeals’ ruling that downloading musical works over the Internet does not constitute public performance under the Copyright Act.  The Second Circuit concluded that the Act’s “public performance” factor requires “contemporaneous perceptibility” of the work, such as Yo-Yo Ma “draw[ing] the bow across his cello,” while downloading a song is merely transmitting music to a potential listener.  The court drew a distinction between a download and a streaming transmission over the Internet, explaining that the latter is a public performance because the user perceives the song simultaneously with the transmission.  Further, the download itself does not play the file and the user must take additional action to experience the work.  In its petition for cert., ASCAP argues that downloading a music file amounts to public performance for which the author is entitled to additional compensation (artists already collect royalties for copies created by the download).  ASCAP maintains that the Second Circuit’s interpretation of the Act was inaccurate because a public performance can occur even if listeners receive it “at different times” and that the Circuit court had created an “unworkable and inequitable statutory scheme that fails to account for emerging technologies.”

- BMG faces class action lawsuit over digital royalties.  Rob Zombie, Whitesnake, and other music performers are leading a federal class action lawsuit against UMG Recordings, Inc., claiming the world’s largest record company is shortchanging them on royalties from digital downloads and cell phone ringtones.  The musicians estimate they have been underpaid by tens of millions of dollars per year and seek restitution and declaratory relief entitling them to future royalties.  According to the complaint, UMG arbitrarily labels digital music downloads from online music providers like iTunes as a “sale” rather than a license and pays the artists a lesser royalty than the standard 50% payable in connection with a license to a third party.  The class action follows a Ninth Circuit ruling that UMG underpaid Eminem and other performers for digital music download royalties.  Rob Zombie’s lawsuit is based on the same grounds, which tips the scales in the musicians’ favor, especially after the Supreme Court refused to review the Eminem decision.  As the New York Times predicted in the wake of that ruling, its implications may indeed prove life changing for many aging musicians.

- Polo wears Ralph Lauren.  The United States Polo Association (“USPA”) will not be able to place the word “Polo” next to its Double Horsemen logo on a new line of perfume for men because a New York court ruled that such use infringes on Polo Ralph Lauren’s (“PRL”) trademark.  Federal Judge Robert Sweet found that USPA’s logo featuring two men on horses swinging polo sticks (PRL’s features one player in a similar posture) used in conjunction with the word “Polo” is likely to cause consumer confusion with the clothing designer’s perfumes.  USPA initially filed the suit in 2009 seeking a declaratory judgment that its logo does not infringe PRLs’ trademark.    The court denied USPA’s request and instead granted PRL a permanent injunction against USPA’s use of the logo.  In its ruling, the court relied on PRL’s consumer survey showing confusion in 27.8% of the participants.  The court also determined that PRL’s trademark is inherently distinctive and said that the USPA’s choice of colors and wording on the product suggested that they “intended to capitalize on PRL’s reputation and goodwill-instead of building their own.”  

- Gergana Miteva

- 70’s Rat on Fire novel ignites copyright dispute. Acclaimed author George V. Higgins’s widow, Loretta Cubberley, filed a complaint against the Fund for Theatre and Television (“FTT”) to halt its production of a film based on Higgins’s novel Rat on Fire.  Cubberley charges that FTT lost the book’s exclusive motion picture rights it acquired in 1979, after sitting on them for over thirty years.  Higgins, who had a successful career as a Boston prosecutor, authored 25 books focusing on Boston’s criminal underworld and is considered one of the masters of the crime-novel genre.  He initially wrote Rat on Fire as a manuscript for a PBS television miniseries, which was never produced, and subsequently released it as a novel.  Cubberley speculates in her complaint that the miniseries project never came to light because PBS deemed the content inappropriate for public television (the book drew attention to some professional arsonists’ practice to set rats on fire and release them in targeted buildings).  She further contends that FTT dusted off the novel, in part, because a Brad Pitt film based on another Higgins book is in production.

- Harley-Davidson’s Brando boot starts off on the wrong foot. The iconic actor’s brand licensing entity, Brando Enterprises, is suing Harley-Davidson Motor Company for launching a line of boots called The Brando without authorization.  Brando’s estate is seeking an order to bar the sale of the product, plus punitive damages and any profits on the boots’ sale.  According to the Associated Press, the boots look similar to those the late actor wore in the 1953 film classic The Wild One, and although Harley-Davidson does not currently offer them, they can still be purchased through some online retailers.  A number of high-profile brands have licensing partnerships with Brando Enterprises, including Triumph motorcycles, MasterCard, and Dolce & Gabbana.

- Disney cedes Seal Team 6 trademark to the Navy. The Walt Disney Company announced recently that it is abandoning its application for the Seal Team 6 trademark “out of deference to the Navy,” following a competing application for the trademark by the Navy.  Two days after the Navy Seals overpowered Osama Bin Laden, Disney applied in the U.S. Patent and Trademark Office to trademark Seal Team 6.  Had it acquired the trademark rights, Disney would have been able to sell a branded line of products like toys, video games, Christmas stockings, and Christmas-tree ornaments bearing the Navy team’s name.  The Navy’s application for the trademark, filed ten days later, had the potential of blocking Disney’s bid if the media conglomerate had not voluntarily withdrawn it (the Navy already owns the trademark for “Navy Seals”).  There are currently three Navy Seals-themed films in production, including one by Hurt Locker director Kathryn Bigelow.

- Gergana Miteva

The Second Circuit has revived a New York publishing house’s New York based copyright infringement lawsuit against an online publisher.  With guidance from New York State’s highest court, the Second Circuit reversed a decision that would have required the publisher to bring suit in the state where the infringer uploaded the works, rather than the publisher’s home state.  The decision provides comfort to New York copyright holders who seek to stop digital piracy caused by out-of-state infringers by bringing suits in New York.  

Penguin Group (USA) Inc. (“Penguin”), one of the largest trade book publishers in the world, sued American Buddha for copyright infringement.  American Buddha is a not-for-profit corporation based in Arizona that maintains a website called the Ralph Nader Library (which despite its name is not affiliated with consumer advocate Ralph Nader).  The website “provides access to classical literature and other works.”

Penguin alleged that American Buddha published complete copies of four Penguin books online, including Oil! by Upton Sinclair among others, thereby infringing Penguin’s copyrights in those works.  American Buddha made the books freely available to its 50,000 members and the general public on its website. Continue reading »

- Katie Holmes Settles with Star Magazine. Katie Holmes has settled a $50 million defamation lawsuit she filed in March against Star Magazine – arising from the tabloid’s “KATIE DRUG SHOCKER” and “ADDICTION NIGHTMARE” headlines.  The magazine publicly apologized to Holmes on the cover of its latest issue and promised to make “a substantial donation” on her behalf to the Dizzy Feet Foundation, a charity dedicated to helping underprivileged children to become professional dancers. The actress has reportedly accepted the apology and expressed her satisfaction that the dispute was “resolved amicably.”

- Tolkien Estate Reportedly Will Permit Publication of Book Featuring Tolkien as Character. This short-lived legal battle began in late January when J.R.R. Tolkien’s Estate, administered by the writer’s son, sent a cease-and-desist letter to Steve Hillard, the self-published author of Mirkwood: A Novel About J.R.R. Tolkien.  The Estate accused Hillard of commercially exploiting Tolkien’s name and likeness and of “trivializ[ing]… the personality and reputation of the late professor.” The letter demanded that all copies of the book be destroyed.  Hillard responded by asking a Texas federal court  for a ruling that the book does not infringe on the Estate’s intellectual property rights. As described in the complaint, the book is “both a work of fiction and a critical analysis of the works of J.R.R. Tolkien” where the author plays a central role in a young woman’s quest to find her grandfather.  Hollywood Reporter reports that the settlement permits publication of the book — with a prominent disclaimer of any association with Tolkien’s Estate and publisher.

- NBA star sues Basketball Wives reality show. Miami Heat star Chris Bosh has filed an eleven-count federal complaint against his ex-wife, Allison Mathis, and Basketball Wives producer, Shed Media.  Among other things, the athlete alleges trademark dilution, misappropriation of his name and likeness, false endorsement, and public disclosure of private facts about his life.  Bosh says the show and his ex-wife are getting a free ride on his celebrity status and are robbing him of his “life right” to tell his own story. The reality series Basketball Wives, created by Shaquille O’Neal’s ex-wife, Shaunie O’Neal, depicts the lives of women who have been romantically involved with professional NBA players. 

- Trademark battle: Universal CityWalk v I-Walk Orlando. Universal City Studios, owner of trademarks “CityWalk”, “Universal CityWalk”, and “Universal CityWalk Orlando” is suing Unicorp USA, owner of “I-Walk” and “I-Walk Orlando” for trademark infringement, trademark dilution, and unfair competition — seeking injunctive relief and money damages. Universal complains that Florida-based Unicorp is using the trademarks to promote soon-to-be-constructed retail stores, restaurants and bars – all of which would be located approximately three miles from the Universal Orlando Resort. The plaintiffs fear the use of “I-Walk” and “I-Walk Orlando” marks would be likely to confuse and deceive consumers, and that Unicorp has intentionally employed “deceptively similar” trademarks in order to associate itself with plaintiff’s “high quality services” and to benefit from local goodwill established over eighteen years. Who knew walk-related marks would be so popular in a place where almost everyone drives?

- Gergana Miteva