By Zachary Wadlé

Satoru "Miles" Kobayashi opened a new jazz club and restaurant in Manhattan in April 2010. Kobayashi named his establishment the “Miles Café” and used the “Silhouette Profile” of jazz icon Miles Davis as part of his logo. The heirs of Miles Davis felt “Kind of Blue” about this development and sued Kobayashi in federal court claiming trademark dilution, false advertising, and various violations of the Lanham Act. Davis’ heirs say Kobayashi changed his first name to Miles, claimed the real Miles Davis appeared to him in a dream and suddenly inspired him to open a restaurant bearing his name. They allege “[Kobayashi is] intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles’ Cafe in a way that is likely to mislead the public.” Davis’ heirs seek injunctive relief and the destruction of all of the "confusingly similar" Miles Café advertising and merchandise.

 

Davis’ heirs’ complaint relies on trademarks they own for the name “Miles Davis.” But you may ask how can Miles Davis’ heirs have exclusive rights over the “Miles Davis” name? Surely there are other people named Miles Davis that have just as much right to use their name as the jazz legend.  This is the reason why trademarking a personal name is difficult under trademark law. In particular, you have to demonstrate “secondary meaning” to qualify for trademark protection. Miles Davis won eight Grammys. His 1959 album "Kind of Blue" has sold more than 4 million copies. He was inducted into the Rock & Roll Hall of Fame in 2006 and was declared a national treasure’ by the U.S. House of Representatives in 2009. These kind of laurels helped prove the requisite “secondary meaning” of Miles Davis’ name, and allowed his heirs to assert trademark rights against Mr. Kobayashi.

 

Continue Reading What’s in a Name?

By David Muradyan

“South Park” is an animated sitcom that airs on Comedy Central, and centers on the happenings of four foul-mouthed fourth graders in a small mountain town in Colorado. As the District Court in Brownmark Films, LLC v. Comedy Partners stated, in the nearly 15 years that South Park has been on the air, “the four central characters have, amongst other adventures, battled space aliens, hunted Osama Bin Ladin in the wake of 9/11 ala Elmer Fudd and Bugs Bunny, and have, more recently, resolved the nation’s economic woes by charging the nation’s consumer debts on one of the character’s credit card.” Brownmark Films, LLC, v. Comedy Partners, 2011 U.S. Dist. LEXIS 72684 (E.D. Wis. July 6, 2011) (“Brownmark”). 

 

The entities involved in the production of South Park found themselves in the middle of a copyright infringement suit because of a South Park episode entitled “Canada on Strike,” which allegedly infringed on Plaintiff Brownmark Films, LLC’s (“Plaintiff” or “Brownmark”) copyright in WWITB (defined below).  In that episode, the naïve “Butters Stotch” (one of the South Park characters) is coaxed by his fellow classmates to record an internet video in the hopes of making money on the Internet. The Internet video replicates parts of the “What What (In the Butt)” (“WWITB”) video, which was a copyrighted video. The Court described the WWITB music video as “a nearly four minute ditty regarding the derriere of the singer of the underlying work.” The Court further explained: “The music video begins with an array of bizarre imagery—from a burning cross to a floating pink zeppelin—and only gets stranger from there. The heart of the video features an adult African American male ensconced in a bright red, half-buttoned, silk shirt, dancing, grinning creepily at the camera, and repeatedly singing the same cryptic phrases: ‘I said, what what, in the butt.’ And “you want to do it in my butt, in my butt.’” Brownmark, the purported co-owner of a copyright in the WWITB music video, filed suit against various entities involved in the production of South Park, alleging copyright infringement. According to Brownmark, the “Canada on Strike” episode has an internet video—which lasts for 58 seconds of the approximately 25 minute episode—replicating parts of the WWITB video, with the 9 year old Butters “singing the central lines of the original video, while dressed as a teddy bear, an astronaut, and even as a daisy.” As the Court noted, “[i]n the episode, Butters’ video, much like the original WWITB video, goes ‘viral,’ with millions watching the clip. However, after their attempts to collect ‘internet money’ prove fruitless, the South Park fourth graders learn that their video, much like other inane viral YouTube clips, have very little value to those who create the work.” The defendants justified their use by claiming “fair use,” which is an affirmative defense to copyright infringement.

 

Continue Reading South Park Prevails in Copyright Infringement Case Thanks to the “Fair Use” Doctrine

On September 8, 2011, the Senate voted 89-9 to pass the America Invents Act (the “Act”). Thereafter the bill was sent to President Obama, who is expected to sign it into law. While the provisions of the Act include more funding for the United States Patent and Trademark Office, the eventual elimination of interference proceedings, and the creation of a potentially more streamlined post-grant challenge process, the most noteworthy portion of the Act grants priority to a patent application based on the application’s filing date. This represents a significant departure from the longstanding United States patent law giving the first person to invent a device priority over all others.

The “first to file” provision of the Act will be met with mixed reactions. Individual inventors and small businesses claim that the “first to file” provision will create a race to the Patent Office, requiring them to expend significant amounts of money and other resources in order to quickly file patent applications ahead of other parties who may be working in a similar technological field. Larger businesses believe that the Act will be beneficial to the patent system by reducing the number of disputes relating to the priority of patent applications by creating an objective priority date. Of a more general concern is the possibility that the rush to file patent applications might result in a lower overall quality of the claims described in patents, potentially resulting in ambiguity and causing difficulty in interpreting those claims in the context of patent infringement litigation.

Continue Reading On the President’s Desk: the America Invents Act

Scott Hervey is speaking at the INTA’s TMA Conference on  October 2, 2011.  He is part of a panel discussion on the various IP issues that arise in the development, production and distribution of reality television.  He is joined by Beth Allegretti of Fox Entertainment Group.  For more information click on the picture above.

 

 

 

By Jeffrey Pietsch

The last decade has been tough for record companies. Record sales drastically fell with the advent of the internet and with the prevalence of unauthorized music downloading. Now, the record companies face a new foe in the Copyright Act of 1976 (“Copyright Act”). Under the Copyright Act, artists are able to exercise termination rights on grants made for copyrighted works which will allow artists to regain control of their work after 35 years from the date of such grant. This provision of the Copyright Act applies specifically to grants made on or after January 1, 1978. Because 2013 will be the first year an artist may exercise their termination rights, it is likely that record companies will resort to litigation to maintain their rights to such works. One example is the declaratory action filed recently by Scorpio Music and Can’t Stop Productions, Inc. against Victor Willis (aka the Cop or Naval Officer) of the Village People in an effort to prevent the exercise of termination rights for such popular songs as Y.M.C.A. and Macho Man.

Before examining the action filed against Victor Willis, it is instructive to first review and analyze the termination provision of the Copyright Act at issue. Section 203 of the Copyright Act provides for the termination of transfers and licenses granted by an author. Specifically, § 203 states: “In the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination.” The following conditions must be met for the termination:

(1)      the termination must be made by an authorized person

(2)      a 35-year period exists between the grant and the termination date; and

(3)      advance notice must be provided not less than two years and no more than ten years before the termination date.

Continue Reading Macho Man: Village People Singer Battles Record Companies over Copyright Termination Rights