Articles Posted in Trademark and Copyright Litigation

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Not all companies are sure how to apply their business practices to the Digital Age. Since most people running some of the larger, more established companies came of age in a pre-internet era, many of them are understandably stumped by what laws and rules apply to which online situations (although admittedly a lot of younger viewers aren’t sure about the rules of social media either).

The situation has improved over the years as everyone has adjusted to the new technologies, but the early part of the new century was an especially trying time for companies and individuals alike.

Take Stephanie Lenz for example. She took a video of her infant son dancing to the song, “Let’s Go Crazy,” by Prince, and then uploaded it to the internet where anyone could see it – without asking permission or paying for the use of a song to which she did not own the rights. That seemingly harmless act resulted in a copyright lawsuit that dragged on for more than ten years.

Universal Musical Publishing Group (UMPG), which owns the rights to the recordings of Prince’s songs, issued an order under the Digital Millennium Copyright Act for Lenz to take down the video.

Lenz initially complied with the order, but then she contacted the Electronic Frontier Foundation, an international non-profit group that works to protect people’s rights online. The company is based in San Francisco and argued that UMPG had ignored the fair-use exception to the copyright law when it ordered Lenz to take down the video. Continue reading

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One of the biggest advantages to settling a lawsuit outside of court is that it removes the uncertainty of going to trial. The plaintiffs are sure to get some financial benefit, rather than risking it all at trial, and the defendants often pay a lower amount than they would have had to pay if they had left it up to a jury. Both parties get to avoid the time, expense, and hassle involved in pursuing a legal dispute that has the potential to drag on in the courts for months or even years. This is why most class action lawsuits settle before ever reaching court.

But if the parties reach a settlement agreement and one or more of the plaintiffs don’t agree with the terms of the agreement, they can choose to opt out of the class. Plaintiffs who decide not to opt out, and take the settlement, are usually prevented from filing similar lawsuits against the defendant in the future as part of the settlement agreement. It’s for this reason that, when someone decides to opt out of a class, it’s often because they want to reserve their right to sue the defendant. In most cases, they think they can get better terms, either by pursuing a lawsuit all the way through a trial or pushing for a more favorable settlement agreement.

This is the case with the recent class action copyright lawsuit against Spotify. The music streaming company recently reached a settlement agreement worth $112.55 million with a class of more than 535,000 plaintiffs. After the class members were notified of the settlement and its terms, about 1,200 members opted out of the class. Continue reading

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A recent copyright ruling involving embedded Tweets of quarterback Tom Brady has created alarm among the digital media, where photos are embedded and linked to on a routine basis. In a copyright infringement case that could have a far-reaching impact on anyone who uses images on a blog or website, the Southern District of New York considered how photos are shown on one site but stored on another site’s server implicate the image owner’s exclusive display right under the federal Copyright Act.

District Court Judge Katherine Forrest held that when news organization defendants embedded Tweets on their web pages, they violated the plaintiff’s display right, and “the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Plaintiff Justin G. took a photo of New England Patriots quarterback Brady with the Boston Celtics manager in East Hampton, N.Y., in 2016. He uploaded it to his Snapchat page, where it went viral with the help of Twitter. Several news outlets including defendants Breitbart, Time Inc., and the Boston Globe then embedded the Tweeted image in their articles. Justin sued under the Copyright Act, claiming he never licensed the rights to display his photo. The other named defendants include Yahoo!, Vox Media and Gannett.

“A review of the legislative history reveals that the drafters of the 1976 Amendments [to the Act] intended copyright protection to broadly encompass new, and not yet understood, technologies,” Judge Forrest wrote, addressing the law’s application to the new frontier of social media. Continue reading

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Sometimes truth really is stranger than fiction.

As if the idea of a monkey (a “crested macaque,” to be precise) taking a perfect selfie wasn’t strange enough, the lawsuit that followed is.

In 2011, David Slater, a British nature photographer, was taking pictures of the wildlife on the Tangkoko reserve in Indonesia when a monkey by the name of Naruto managed to get Slater’s camera away from him. Naruto took several pictures before Slater managed to get his camera back and one of those pictures turned out to be a perfect selfie – Naruto even smiled and looked right at the camera as he snapped a picture of himself.

Later on, Slater published a book that included some of the pictures Naruto had taken, which had been dubbed “monkey selfies.” That’s when the People for the Ethical Treatment of Animals (PETA) got involved.

PETA sued Slater on behalf of Naruto, trying to claim that, because Naruto had taken the picture, Naruto owned the copyright to that photo. By publishing those photos, Slater had allegedly violated Naruto’s copyright, according to PETA’s lawsuit.

A federal district judge in San Francisco dismissed PETA’s claims in early 2016, saying that, since Naruto was not a person, he could neither own a copyright. Continue reading

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Miley Cyrus has become the latest pop star to be hit with a multi-million-dollar lawsuit for one of her songs, which reached second place on the Billboard Hot 100 in 2013. The song is “We Can’t Stop,” which Michael May, a Jamaican songwriter, alleges bears a striking similarity to his own song, “We Run Things,” a 1988 reggae track that reached No. 1 in Jamaica.

The line in question appears in “We Can’t Stop” as “We run things/things don’t run we,” which May alleges is suspiciously similar to the line “We run things/things no run we,” which appeared in “We Run Things.”

In addition to Cyrus herself, her manager, Larry Rudolph, has also been named as a defendant in the lawsuit, as have writers and producers of the song, including Timothy Thomas, Theron Thomas, and Mike Williams. RCA Records and Sony Music are also defendants in the copyright infringement lawsuit.

To support May’s allegations, the complaint points to a 2015 article in which Theron Thomas talks about how Caribbean music has influenced his own work. It further alleges that Cyrus’s song would not have seen the same success without the stolen elements of Jamaican music, specifically the language of Jamaican Patois. Continue reading

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Having remained a beloved classic for more than fifty years, the status of Harper Lee’s famous novel, To Kill a Mockingbird was seriously upset when an earlier version of the novel, Go Set A Watchman was published a few years ago. Specifically, readers were floored by the depiction of Atticus Finch as a racist segregationist, rather than the morally upright character depicted in Lee’s first novel.

With our perception of Atticus thus changed, it only makes sense for a playwright to draw on that dichotomy when writing an adaptation of either of Lee’s novels. But Lee’s estate does not appear to agree.

A new Broadway production of “To Kill A Mockingbird” is in development, with Jeff Daniels set to play the seminal character of Atticus, and Oscar winner, Aaron Sorkin, writing the script.

It should come as a surprise to no one that Sorkin wants to update this historic character. An adaptation is rarely, if ever, a word-for-word translation, since things that work on the page don’t necessarily work on the stage or on the screen. By the same token, things that had an impact in 1960 aren’t necessarily going to be as effective in 2018. In fact, Sorkin said he deliberately wanted to avoid setting the play in the same political climate as the book, since he doesn’t think that would be as interesting to a modern audience.

But when Tonja B. Carter, the attorney in charge of running Lee’s estate, heard about Sorkin’s ideas for Atticus, she reportedly met with Scott Rudin, one of the show’s producers, to express her concerns regarding the change. The two were reportedly unable to resolve their different interpretations of the matter, and Lee’s estate sued the producers of the show shortly thereafter. Continue reading

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As important as their reputation is to their career, public figures (by the nature of their jobs, which puts them in the spotlight) have a hard time controlling that reputation. The First Amendment to the U.S. Constitution protects most forms of freedom of speech, especially those regarding public figures. The idea is that free and unprohibited discussion of public figures makes for a more informed public, which can only be good for the public.

This includes creative renderings of historical events and people. Writers and artists often choose to write about things that actually happened decades, or even centuries ago, either because those events are interesting in and of themselves, and/or to make some sort of commentary on modern society.

Ryan Murphy chose to make a limited series about the making of the movie, “What Ever Happened to Baby Jane,” which starred Joan Crawford and Bette Davis. The series, “Feud: Bette and Joan,” was Murphy’s way of discussing sexism and ageism in Hollywood, two factors that continue to affect the movie and TV industry (among others) to this day, more than fifty years later.

The problem, according to a recent lawsuit, was the fact that, in addition to Joan Crawford and Bette Davis, the show necessarily had to write about other people who surrounded and interacted with those two stars at the time the film was made, including Olivia de Hallivand, now 101 years old. De Hallivand objected to the way she was portrayed in the limited series and says they never obtained her permission to use her name or likeness for the show. Continue reading

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Fox Broadcasting Co. has come out swinging against a $30-million lawsuit by the estate of Muhammad Ali for unauthorized use of the late boxing legend’s image in a 2017 Super Bowl promotional spot entitled “The Greatest.”

Last October, Muhammad Ali Enterprises, LLC (MAE), filed a complaint against Fox in the Northern District of Illinois alleging violation of Ali’s publicity rights under Illinois and federal law. The parties later agreed to transfer the case to the Northern District of California, where both parties are located.

In its motion to dismiss filed January 16 in Oakland federal court, Fox claims the suit is barred by the First Amendment, Illinois and California statute, and preempted by the federal Copyright Act. Its primary defense is that the Super Bowl, and Ali himself, are matters of public interest and therefore exempt from statutory publicity protections, and also that the spot is exempt as part of a sports broadcast.

Fox argues that Illinois has no meaningful relationship to the case, therefore its law should not apply. Further, Fox asserts that Illinois choice-of-law rules allow it to invoke California anti-SLAPP law, which prohibits legal actions designed to chill exercise of free speech. (SLAPP stands for Strategic Lawsuit Against Public Participation.) Continue reading

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In this blog post, we will look at the federal courts and the need to evaluate the protection of customer lists as trade secrets. Contextually speaking, the federal statute is in place for the purposes of misappropriation.

In order to meet the standard of a misappropriation, there must be:

(1) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means or  (2) disclosure or use of a trade secret of another without express or implied consent. When the alleged misappropriation is based on disclosure or use, the person who disclosed the information must have: “(i) used improper means to acquire knowledge of the trade secret; (ii) at the time of the disclosure or use, knew or had reason to know that the trade secret was; (I) derived from or through a person who had used improper means to acquire the trade secret; (II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or (III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or (iii) before a material change of the position of the person, knew or had reason to know that—(I) the trade secret was a trade secret; and (II) knowledge of the trade secret had been acquired by accident or mistake.” 18 U.S.C. § 1839(5).

Customer lists can be considered one of the most valuable assets that a company can have.  Theft or trade of such information can cost some companies up to hundreds of thousands, if not millions.  That is why there has been a move to guard the trading of this within the United States of America.  The scope of the internet and the way we interact in the current climate is affected by digital marketing, online purchasing and through the selling of products via social media.  This often requires tracking of customers via a list or database of clientele that is accumulated by business over the years.

In the past, violations have been met with a lawsuit.  Now there has been a change in legislation and at a Federal level.  Misappropriation now equals a breach of law in the absence of a suit.  Previously, such claims were subject to diversity in legislation. Under the legislation, a company whose customer list is misused is entitled to equitable relief, actual damages, punitive damages, and attorney fees. Continue reading

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Owners of a cat became rich by marketing their cat as a “Grumpy Cat.” As a result, all sorts of products including toys and even a movie were made in the name of being a visibly, unhappy cat.  In a one of a kind suit and type of case, copyright infringement was discussed when it came to a cat.

The corporate entity that handled all licensing for Grumpy-cat took a beverage company to suit for violations made in the business of selling coffee.  The beverage company had a valid contract that was enforceable and permitted the production of “Grumpy Cat.” Problems came when Grenade Beverage decided to extend that agreement to a line of Grumpy Cat-branded ground coffee without Grumpy Cat Ltd.’s prior consent and approval.  As such the question arose as to the infringement of trademark and of copyright.  The lawsuit began over the sale of coffee that was unlicensed and marketed under its name. The time span of litigation lasted for over two years. In addition, there was a failure to provide an accounting of sales and profits with no pay a percentage of profits.  Shirts were also being sold in the name of that coffee.

This is one of those cases where a lot of time and money that went into having these contracts and joint ventures chartered.  However, it was all done for a cat and in the name of its face.  Prior to the commencement of litigation, exactly all terms and conditions had been laid out for every variation of the Grump Cat image and brand each time they wanted a new item branded with the cat’s name.  The brand name had even extended to memes.  Internet culture shapes behavior and the culture that we are talking about.  People had started to co-opt into memes which have now become the talk of legal rulings.  Once upon a time, memes were free and harmless.  Back then, no one would admit to owning anything. The intellectual property associated with Grumpy Cat has changed all that.  Any time that someone wants to co-opt a meme, it must be legally sanctioned.  Continue reading