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What is and What Should Never Be: Led Zeppelin Not Feeling a Whole Lotta Love in Pennsylvania

Posted in Copyright Law

On May 31, 2014, members of the band Led Zeppelin and its publishers were sued for copyright infringement by Randy California, the former guitarist and front man of the band Spirit.  The lawsuit, filed in the state of Pennsylvania, alleges that a significant portion of Led Zeppelin’s “Stairway to Heaven” was stolen from “Taurus,” a song written by Mr. California when he was with Spirit.

Claiming that a Pennsylvania court lacks jurisdiction over the band’s three British citizens, Led Zeppelin challenged jurisdiction and, in the alternative, argued that the lawsuit should be Going to California, Over the Hills and Far Away, where venue would be more appropriate.  (Put another way, they sang the Immigrant Song.)  The court denied Led Zeppelin’s motion, leaving the band Dazed and Confused. Accordingly, The Song Remains the Same.

While the decision has undoubtedly been a Heartbreaker for the band, failure to have the case dismissed or transferred is really only a minor setback. It’s not yet time to lead Stairway to Heaven to the Gallows Pole.  The case will simply go forward in Pennsylvania, Wearing and Tearing its way to trial.

Led Zeppelin’s predicament is not a new one for musicians.  In 1971, music publishing company Bright Tunes alleged that George Harrison’s “My Sweet Lord” was a copy of the Chiffons’ hit “He’s So Fine.”  During the litigation, George Harrison testified that he had not noticed any similarities between the two songs until other people started pointing them out, but he also admitted that he had been aware of the Chiffon’s hit before he wrote “My Sweet Lord.”  Ultimately, the court ruled that, although Harrison did not intentionally plagiarize the song, Mr. Harrison had “subconsciously” copied substantial portions and incorporated them into “My Sweet Lord.” The court then ordered Harrison to pay to Bright Tunes three quarters of the royalties he had received from sales of his song.

Bright Tunes should be ringing in Led Zeppelin’s ears.  “Taurus” was released on Spirit’s debut album in 1968.  Led Zeppelin opened for Spirit on their 1969 tour, and later released Stairway to Heaven in 1971.  (It is fair to question why Spirit did not raise a claim for copyright infringement within the last 43 years. Perhaps they were occupied with Somethin’ Else.) As the opening act for Spirit on the 1968 tour, it appears likely that Led Zeppelin probably had heard “Taurus” prior to writing “Stairway.” The band therefore might face a fate similar to George Harrison’s – a finding of “subliminal” infringement similar to the outcome in Bright Tunes.  Based on the royalty award in Bright Tunes, it no doubt will be Celebration Day for Spirit if they successfully prove a case for copyright infringement.

Rock and Roll. That’s the Way. But I don’t want to Ramble On.


Zombies Have IP Too

Posted in IP Law Blog Lawyers In The News

Zombies have become part of our lives.  We are fascinated with vampires, but we are obsessed with zombies.

Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse.  The show first aired on Halloween night in 2010 and was watched by 5.35 million viewers.  It premiered worldwide the same week, in 120 countries.  The premier was preceded by a zombie invasion (orchestrated by AMC and Fox) on October 26, 2010 in 26 cities throughout the world, including Hong Kong, Taipei, and Los Angeles.  The show is now going strong in its fourth season.

Movies about zombies are also alive and well.  Since 1980, zombie movies have brought in almost $1 billion.  The highest grossing zombie movie was Sony’s 2009 “Zombieland,” bringing in $75 million since it opened.  “Warm Bodies,” one of several zom-rom-coms (as this genre is now called) has grossed $65 million since it opened three months ago.  Other favorites include the “Resident Evil” and “Night of the Living Dead” series, and “Shaun of the Dead.”

Thus, even though zombies have been walking (slowly) among us for hundreds (thousands?) of years, we have really just recently (as evidenced by our 33 years of TV and movies) noticed them.  Zombies have been here all along.  In fact, they are way ahead of us in the intellectual property world.

Zombies have amassed a significant number of U.S. patents for their inventions.  The biggest problem zombies face is a defining one: how to come back from being dead.  The undead have developed several inventions to solve this problem and they have obtained patents on these inventions.  (We are not sure why a zombie would want a patent, but we don’t know who to ask, so we can’t tell you.) Continue Reading

Clearing Marks In the Beverage Space Has Become Increasingly Complex

Posted in Trademark Law

In this author’s opinion, I believe that most consumers see wine, beer and mineral water as unrelated products and would not believe that beer, wine or mineral water that share similar trademark elements (e.g., similar words or similar design) are related or emanate from the same source.  However, the TTAB has found otherwise.

Beginning with its 1992 decision in In re Sailerbrau Franz Sailer, the TTAB has been receptive to arguments that wine and beer are related.  In In re Sailerbrau, the TTAB found the mark CHRISTOPHER COLUMBUS for beer confusingly similar to the mark CRISTOBAL COLON and Design for sweet wine.  The TTAB found persuasive the third party registrations introduced by the trademark examiner showing that a number of companies have registered their marks for both beer and wine.

Following that case, the TTAB adjudicated a number of non-precedential cases in which the TTAB found beer and wine related.  For example, in In re Stonestreet, LLC, the TTAB found the mark BUCKEYE for wine confusingly similar to the mark BUCKEYE SPARKLING DRY (stylized) for beer.  Similar to In re Sailerbrau, the TTAB found persuasive third party registrations covering both beer and wine.  The applicant in In re Stonestreet argued that the Federal Circuit case of G.H. Mumm & Cie v. Desnoes & Geddes Ltd., required a finding that beer and wine are not related.  However, the TTAB was not persuaded.  The record in G.H. Mumm demonstrated the MUMM brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers.  The record in Stonestreet lacked any such distinction. Continue Reading

New Jersey Woman Refuses to “Let It Go.”

Posted in Uncategorized

transparentYou don’t have to be a Disney enthusiast like myself to be familiar with its latest blockbuster franchise, Frozen.  To date, the film has grossed over 1.2 billion dollars in worldwide box office revenue, making it the highest-grossing animated film of all time, and the fifth highest-grossing film overall.  The fact is, Frozen has taken the world by storm since its November 27, 2013 release, and it does not appear to be letting up as Disney is planning on opening a Frozen themed ride at Walt Disney World and a Frozen musical on Broadway.  Nonetheless, one New Jersey woman is seeking to put an immediate halt on Disney’s cash cow with the filing of her complaint for copyright infringement in the United States District Court for the District of New Jersey.

On September 22, 2014, Isabella Tanikumi—also known as L. Amy Gonzalez, filed a complaint against the Walt Disney Company (“Disney”) alleging copyright infringement because Disney purportedly stole at least eighteen (18) elements of Frozen from her 2010 autobiography, Living My Truth.  Specifically, Ms. Tanikumi has cited the following similarities: (1) both stories involve villages at the base of snow covered mountains; (2) both stories involve two sisters with different colored hair; (3) both stories involve one of the two sisters injuring the other; (4) both stories have two male characters who act as the romantic interest of one of the sisters; and (5) open doors/gates are involved in the endings of both respective tales.  This list is merely illustrative, but for those of you who wish to see the entire list, feel free to read the complaint and its attachment by clicking Isabelle Tanikumi AKA L. Amy Gonzalez v. The Walt Disney Company.  In the interest of providing full disclosure, the remaining similarities do not get much more mind blowing than those stated above.  Regardless, Ms. Tanikumi obviously believes that she has been wronged by Disney, but whether she can prevail on these farfetched claims remains to be seen. Continue Reading

Model Mayhem – The Communications Decency Act is Not a Defense to Negligent Failure to Warn Claim

Posted in Cyberspace Law, Legal Info, Web/Tech

One of the primary purposes of the Communications Decency Act (“CDA”) is to limit liability for certain internet content providers specifically protecting websites from liability for material posting on their website by a third party. In Jane Doe No. 14 v. Internet Brands, Inc., the operator of a networking site in the modeling industry sought to use the CDA as a defense to a negligence claim based on a failure to warn.  The facts of the case are horrific.

Jane Doe was an aspiring actress who posted her information on the networking site  In February 2011, she was contacted by two men Lavont Flanders and Emerson Callum, about a modeling audition in Florida.  Jane Doe traveled to Florida to meet with the two men and was given a drug that caused her to pass out after which she was raped and the assault made into a pornographic film.   (Flanders and Mr. Callum were convicted of numerous crimes by a federal jury in Florida and sentenced to life in prison for this and other similar assaults.)

Jane Doe claimed that the owner of the website, Internet Brands, Inc. knew of the two men’s unlawful conduct but took no steps to warn her or other users of the threat.  Prior to the 2011 assault, Internet Brand, which had purchased the Modelmayhem site in 2008, had apparently sued the seller of the site in 2010 for failing to disclose the potential civil liability arising from the criminal deeds of Callum and Flanders.  She brought a claim against Internet Brands, Inc. for negligence under California law which recognizes a cause of action for failure to warn. Internet Brands moved to dismiss the claim asserting that the CDA immunized it from liability as to Jane Doe’s claims.  The trial court agreed and dismissed the complaint.  Jane Doe appealed to the Ninth Circuit which reversed the trial court’s decision in an opinion dated September 17, 2014.

Continue Reading

Patents Must Provide Clear Notice of Their Scope

Posted in Patent Law

The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.”  35 U.S.C. §112, ¶2.  This requirement is referred to as “definiteness.”  A patent that fails to satisfy this requirement may be found to be invalid for indefiniteness.

The purpose of the definiteness requirement is to provide the public with notice of what the patent owner owns, and what would be an infringement of the patent.  Thus, the definiteness requirement serves to encourage innovation by providing certainty as to what the patent protects.

This year, the United States Supreme Court vacated a Federal Circuit Court of Appeals decision on the grounds that the Federal Circuit’s test for indefiniteness was not precise enough and would result in confusion in the district courts.  The case is Nautilus, Inc. v. Biosig Instruments, Inc., 189 L.Ed. 2d 37 (June 2, 2014).

In 2004, the patent owner, Biosig, sued Nautilus for infringement of a patent covering a heart-rate monitor used in exercise.  Biosig’s heart monitor was different from existing heart monitors in that it was more accurate because it did not measure both electrical signals from the user’s heart and from the muscles.  The Biosig heart monitor used two pairs of electrodes, one pair for each hand of the user.  Biosig alleged that Nautilus, who owned the StairMaster brand of exercise machine, used the patented heart monitor in StairMaster machines. Continue Reading

Gallo Whines Its Way Into the Tequila Business

Posted in Trademark Law

transparentIn the not so distant past, E & J Gallo Winery (“Gallo”) decided that it was not satisfied with only being a player in the wine business.  It decided to expand his horizons and venture into the tequila business, which is currently filled with such players as Patron, Don Julio, Jose Cuervo, and perhaps most importantly, 1800 Tequila (“1800”).  After placing a significant amount of time and effort into the release of its new tequila, Camarena, Gallo was informed that its supplier, Tequila Supremo, had received a cease and desist letter from Agavera Camichines S.A. de C.V. (“Agavera”), the holder of trademark and trade dress rights for the “1800 Tequila” brand.  Accordingly, Gallo brought suit for declaratory relief in the United States District Court in the Eastern District of California.

Agavera and co-defendant, Proximo Spirits Inc. (“Proximo”), counterclaimed that Gallo’s Camarena bottle design infringes Proximo’s registered trade dress and also constitutes false designation of origin under the Lanham Act and unfair competition under common law.  Gallo sought and prevailed on its motion for summary judgment before the Honorable Judge Lawrence J. O’Neill of the Eastern District of California.  Judge O’Neill found that Proximo failed to raise a genuine issue as to whether its trade dress was distinctive.  Furthermore, it was found that there was no likelihood of confusion between 1800 Tequila and Camarena.  Proximo moved for reconsideration on grounds that its trademark registration and related description of the 1800 Tequila bottle and stopper should have constituted sufficient evidence for a trier-of-fact to rely on in deeming the bottle distinctive.  Nonetheless, Judge O’Neill denied the request.  The court also denied Proximo’s motion to dismiss the declaratory judgment action on grounds that the court lacked subject matter jurisdiction.  As a result, Proximo appealed the decision to the Ninth Circuit to challenge the court’s ruling on the motion to dismiss and its grant of summary judgment on the counterclaims.   Continue Reading

Ninth Circuit Limits Application of the Computer Fraud and Abuse Act

Posted in Trade Secrets

Victims of trade secret theft often can seek a variety of civil and criminal remedies against those who have absconded with proprietary information.  The Ninth Circuit however recently rejected criminal charges in a situation where the claims could be addressed as a civil matter under California’s trade secret laws.

In United States v. Nosal, David Nosal was sued by his former employer, the Korn/Ferry executive search and placement firm.  After leaving Korn/Ferry, Mr. Nosal contacted several former colleagues who were still working with the company and asked them for assistance with his efforts to set up a competing business.  Mr. Nosal’s former co-workers had access to a significant amount of proprietary information on the Korn/Ferry computer system, and assisted Mr. Nosal by using this access in order to provide names, contact information, and other confidential data from Korn/Ferry’s proprietary database to Mr. Nosal.  Although their access to the database was authorized, the employees provided information to Mr. Nosal in violation of a trade secret and nondisclosure agreement with their employer. Continue Reading

Vicarious Liability Under the Lanham Act: The Amazon Affiliate Case

Posted in Copyright Law

In a sensible decision, the Ninth Circuit Court of Appeals recently ruled that Inc. is not vicariously liable for copyright infringement based upon the conduct of its Associates who use copyrighted photos without permission on their linked websites.

This decision is particularly important because there are an increasing number of “copyright trolls” patrolling various Internet websites. These trolls, sometimes using computerized software to locate allegedly protected images, engage in “hit and run” litigation whereby they identify an alleged act of infringement and then seek a nominal — but still significant  — sum (usually less than $5,000) to instantly settle the case. They even go so far as putting in credit card payment information in their “dunning letters.” Intent is not a factor. The trolls well know that establishing a fair use defense is probably more costly than simply settling the case. An entire industry is now being built on these kinds of spurious lawsuits, where a few years ago a polite takedown notice would have been all that was required. Continue Reading

Who Owns Facebook “Likes” on Your Page

Posted in Uncategorized

The answer may surprise you.

This dispute over ownership of Facebook ‘likes’ pits the creator of a fan Facebook page for a TV show against the television network that owns the show.  The facts of the dispute are as follows:   From 2008, the CW Network broadcasted the television series “The Game”, a dramatic comedy about the lives of professional football players and their wives and girlfriends.  BET acquired the syndication rights to the series in 2010 and then in 2011 began producing original episodes.

In 2008, when the series was on the CW Network, Stacey Mattocks created a Facebook fan page for the series.  Mattocks did not post any CW or BET owned content and she did not hold the Facebook page out to the public as the “official” series page.  Around October 2010, BET hired Mattocks to perform part-time work managing the series’ Facebook page.  BET then regularly instructed Mattocks to post, or not to post, certain information on the page and provided her with exclusive photos and video clips.  Mattocks posted most of the content on the FB Page, but BET employees also occasionally posted material.  Apparently Mattocks did a good job managing the series’ Facebook page as the number of ‘likes’ grew from around two million to over six million.

In February 2011, BET and Mattocks entered into a written agreement regarding each parties’ rights and privileges regarding the Facebook page. Mattocks granted BET full administrative access to the page, and BET agreed not to exclude Mattocks from the page by changing her administrative rights.  However, it appears that this agreement was silent on which party owned the Facebook page. Continue Reading