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