Opening Pandora's Box: Supreme Court Allows Archaic Copyright Infringement Cases to Proceed

This week, the U.S. Supreme Court opened Pandora's Box.

The decision that the Supreme Court may come to regret involved a copyright infringement lawsuit surrounding the script to the movie Raging Bull, which was released in 1980.  In the film, Oscar-award winning actor Robert DeNiro played boxer Jake LaMotta.  

An heir to the co-author of a 1963 screenplay about the life of the boxer apparently waited until 2009 to file a copyright lawsuit, claiming that the 1980 movie had copied portions of her father's screenplay without authorization.

The District Court in Los Angeles and the Ninth Circuit Court of Appeals applied the equitable doctrine of "estoppel by laches," borrowing the 3-year statute of limitations in the U.S. Copyright Act.  Those Courts both found that the writer's heir had deliberately waited to file suit, prejudicing MGM which had released the film thirty-four years ago.

However, on Monday, in an unusual 6-3 split not along ideological lines, Judge Ruth Bader Ginsburg wrote for the majority, finding that the significant delay will not bar the heir from seeking damages or an injunction on a rolling basis, going forward.

The majority reasoned that each time a new Raging Bull DVD is printed and sold, there is a new independent act of copyright infringement potentially violating the heir's copyrights. Every new DVD that is printed, every time the film is broadcast on television or the film is re-mastered or re-released, is effectively a new act of infringement subject to the 3-year window going forward, not backward.

The end result is that copyright disputes that originated thirty or forty years ago -- or even in the more distant past -- can be resurrected and instituted now.

Justices Stephen Breyer, Anthony Kennedy and Chief Justice Roberts dissented, holding that the precedent would upset settled doctrine, and open up years of litigation over old wounds.

70-year old Jimmy Page, Robert Plant and others in Led Zeppelin presumably agree with the dissent's point of view.

In 1971, Zeppelin released the now iconic "Stairway to Heaven."  According to some estimates, the song has earned at least $562 million since its release, a number poised to rise higher since Zeppelin is set to release new versions of its albums this summer.

Relying on Monday's Raging Bull decision from the U.S. Supreme Court, Time magazine reports that a new copyright infringement lawsuit has now been filed by representatives of the band Spirit, which released an instrumental song "Taurus" in 1968.  According to the newly-filed lawsuit, Zeppelin opened for Spirit in the late 1960's, and was inspired to write the now famous guitar introduction to Stairway.

Direct evidence of copying may nonetheless be difficult to gather.  Spirit's lead guitarist Randy California died in 1997 and documents showing copying, if any, were presumably lost to the mists of time.

Rock Showdown: Queensrÿche Faces Trial Over Trademark Ownership

Queensrÿche with Original Lead Singer Geoff Tate

It appears that hard rock and 1980's "hair bands" are a perennially fertile source of trademark litigation, as well as bar brawls and heady interpersonal drama.

Last year, we reported on the ugly trademark dispute between Ed Kowalczyk and his former band Live as they disputed whether it was appropriate for Ed to continue to bill himself as "Ed Kowalczyk of Live." (According to a recent Rolling Stone interview, that case has been settled).

Now, the original members of progressive heavy metal band Queensrÿche are embroiled in a hotly-contested litigation that is preparing for an imminent trial in a Washington State Court. The band's intellectual property is owned by Tri-Ryche Corporation, which is the company owned by the band's members.

(One legal oddity of this case is that it is an intra-corporate dispute between band members, which is a purely state law matter, whereas the vast majority of trademark cases invoke exclusively federal jurisdiction).

Last year, Rolling Stone reported that fans--and lead singer Geoff Tate himself--were stunned to learn that Queensrÿche had fired its lead singer after nearly thirty years with the band.

For those unfamiliar with Queensrÿche's catalog, it includes such songs as Silent Lucidity and full-length narrative-driven albums Rage for Order and Operation: Mindcrime.

After the 2012 split, two bands were simultaneously using the name and Queensrÿche brand.  They are each identified by their frontman, with one version led by new singer Todd La Torre, with original members Rockenfield, Wilton and Jackson and guitarist Lundgren (who joined in 2009) and the other led by original singer Geoff Tate, with former guitarist Gray, Randy Gane and Robert Sarzo and Simon Wright.

"Queensrÿche" With Lead Singer Todd La Torre

The litigation centers around who should own the rights to control the Queensrÿche brand and related trademarks after an alleged "assault" by Tate on the other band members occurred in Sao Paolo, Brazil early last year.  

The band's core legal argument is that Tate's alleged assault justified his firing as a form 'corporate action' to address his breach of duty to the other members of the entity.

Tate's court papers allege that "[t]he cut-and-thrust of Defendants' motion is that the alleged 'assault' in Sao Paulo, Brazil justifies all of their 'corporate' action under the Business Judgment Rule and leaves Geoff Tate with no defense."

First, Tate argues that there is a genuine issue of material fact demanding a trial regarding what happened in Brazil. Second, Tate substantively disputes the facts and circumstances surrounding the incident in Brazil and does not 'admit' he 'assaulted' anyone.

In his Declaration in Support of the Tates' Motion for a Preliminary Injunction, Geoff Tate swears that Mr. Rockenfield taunted him, saying, 'I fired your wife, I fired your daughter and your son-in-law, and you're next.' Angry, Geoff Tate admits that he 'went after' Mr. Rockenfield, but never touched him."

The Court apparently agreed that a trial was necessary to sort out the mess. According to music blog Blabbermouth, the trial will start in January 2014.

Sounds like a trademark trial worth following.  Stay tuned.

Van Halen Sues Drummer's Ex-Wife for Commercializing Her Married Name

Van Halen was formed in California in 1972, and named after lead guitarist Eddie Van Halen and his brother, drummer Alex Van Halen. Other members of the band have included Wolfgang Van Halen (Eddie's son) on bass guitar, as well as David Lee Roth, Sammy Hagar, and Michael Anthony.

In 1984, drummer Alex Van Halen married Kelly Carter, who legally changed her name to Kelly Van Halen. Twelve years later, the couple divorced, but Kelly kept her married name.

More recently, Kelly started a construction and interior design company under her married name. Kelly applied for several federal trademark registrations for "KELLY VAN HALEN" on products such as chairs, children's blankets, bathing suits, building construction and interior design.

ELVH, Inc., the holding company that owns the band's intellectual property, has now sued her in federal district court in California, alleging that her use of the name "VAN HALEN" as a trade name is likely to cause confusion, dilute the fame of the VAN HALEN trademarks, and unfairly compete with the band.

It also alleges that Kelly Van Halen's use of the trade name is on goods and services that are "either identical to or closely related to the goods sold by" the band.  (It is unclear when the band ever sold furniture or offered any form of construction or interior design services, but I suspect that they have not and this is only a matter of posturing).

The Hollywood Reporter notes correctly that the legal question here is whether senior family name users like Eddie and Alex can permanently enjoin junior family name users like Kelly from using "Van Halen" in a commercial enterprise. 

Courts are often reluctant to enjoin individuals from using their own legal names to identify themselves in trade or commerce, unless the use was clearly likely to cause confusion, or if the junior family member had previously agreed to cease such use.

For example, in 2007, design house Paul Frank Industries, Inc. had sued its namesake and former designer Paul Frank Sunich after he had left the company and began to use his full name to sell competing products.

In that case, the court held that "under trademark law, there is no absolute right to use one's own personal name where that use would be confusingly similar to an established use of a famous mark that the public has come to associate with another source...Mr. Sunich...has no absolute right to make use of his name in a manner that would be confusingly similar..."

However, the Court went on to clarify that "Mr. Sunich, however, is entitled under trademark law to use his name in other contexts, commercial and otherwise, to identify himself 

and inform others about his work.  [There is] no right to prevent Mr. Sunich and the other Defendants from using Mr. Sunich's full name in contexts were such use will not result in any confusion with PFI's use of the Paul Frank mark."

In that case, Sunich's websites had prominently displayed disclaimers informing customers that the products were not affiliated with, sponsored by, or endorsed by PFI.  However, his further sale of T-shirts was prohibited by the Court.

Courts are therefore often willing to draw difficult lines in order to be fair to both parties, and will put the burden on the trademark owner to actually prove that there is a likelihood of consumer confusion.  If confusion can be demonstrated, the accused may be held in contempt of Court for violating the Court's order.

Further, the Hollywood Reporter astutely notes that "the outcome might depend on whether it can be shown that Kelly had intent to trade upon the goodwill or reputation of the famous band's moniker."

While that fact would not be dispositive, if it can be show that Kelly was deliberately attempting to benefit from the band's fame, that could present a problem for her continued use.

Jay-Z, Kanye West, Run D.M.C. and Others Sued for Past Sampling

Unauthorized "sampling" of catchy melodies used in modern music is heating up as a recurring legal issue.  

Several high-profile copyright cases have been filed in recent months against major performers, accusing them of taking a portion, or "sample," of one sound recording and reusing it as an instrument or a sound recording in a different song or piece, without authorization.

As discussed in detail on Wikipedia, sampling was originally developed by experimental musicians in the 1960's.  However, hip hop music was the first popular music genre based around the art of sampling - being born from 1970's DJs who experimented with manipulating vinyl on two turntables.

Sampling is now most often done today with a computer program. However, vinyl emulation software may also be used, and turntablists continue to sample using traditional methods.  The inclusion of sampling tools in modern digital production methods increasingly introduced sampling into many genres of popular music, as well as genres predating the invention of sampling, such as classical music, jazz and various forms of traditional music.

Several recent cases have been filed against established performers, premised on allegations that such activity constitutes a clear form of copyright infringement -- even when the alleged infringement occurred decades ago, and was only recently discovered.

It is likely that sophisticated software tools have allowed performers to go back and analyze musical catalogs to locate potential infringement that may have been harder to audibly detect with the "naked ear."

Jay-Z, Kanye West, Mark Wahlberg, Run D.M.C. and many others face a new copyright infringement lawsuit brought by Twilight Records and Syl-Zel Music which claim that the 1967 song "Different Strokes" that was performed and recorded by Syl Johnson was sampled without permission in a variety of derivative works in the 1990's.

According to the suit which was filed in federal district court in Chicago, Usher infringed upon the Different Strokes copyright with his 1993 song "Call Me a Mack," while Public Enemy allegedly made use of a copyrighted riff without authorization on multiple hit songs including Fight the Power.

Both Mark and Donnie Wahlberg are accused of sampling the same tunes on "The Last Song on Side B."  Run D.M.C. faces similar allegations for its songs "Naughty" and "Beats to the Rhyme."  All of the accused songs were released in the 1990's.

The Different Strokes melody has previously been the subject of similar litigation against more recent music performed by Jay-Z and Kanye West.  A lawsuit filed in 2011 had claimed that those performers improperly sampled the tune on their "Watch the Throne" album.  That suit was settled confidentially.

Putting aside the merits of the factual allegations, the latest cases may face an interesting legal problem.

The U.S. Copyright Act imposes a three year statute of limitations on civil copyright infringement claims from when the claim "accrued," barring a copyright owner from seeking damages for infringement that occurred in the past.

However, where alleged infringement is ongoing, federal courts have split on whether any bar applies, and whether the more flexible and equitable "estoppel by laches" defense should apply.

Furthermore, there is some dispute as to when the statute of limitations begins to run, given modern technology.  Usher's song "Call Me a Mack" was released in 1993, two decades ago.  However, the use of iTunes and cell tone ringtones have created a robust new marketplace for such a song.

The Ninth Circuit Court of Appeals, based in California, ruled in 2012 that an admitted 13-year delay in filing a copyright lawsuit after infringement had been discovered, barred all relief against the defendant.

Other courts have held that the doctrine does not apply in this context, because there is nothing in the text or legislative history of the U.S. Copyright Act that suggests that Congress ever intended for an equitable defense to apply.  It is unclear if the Supreme Court will resolve this split among the federal appeal courts on how to measure a purported delay.

Injunctions against further use of the song by these third parties could present a concern, but equally worrisome to these defendants is the fact that the copyright owner has sought an accounting for all past profits, as well as reimbursement of its' attorneys' fees.

Ironically, "Blurred Lines" of Copyright Law Lead to Litigation

Summer 2013's hottest pop single "Blurred Lines" has become quite a phenomenon.  Its primary vocalist and author, Robin Thicke is the son of Alan Thicke, of the popular family television sitcom Growing Pains.

The song features controversial lyrics about the lack of clear boundaries that have been called "rapey" by feminists, as well as an R-rated music video. The video for the song was released on March 20, 2013, and was made in two versions; the first video features models Emily Ratajkowski, Jessi M'Bengue, and Elle Evans being topless, the second features them covered.



The covered version on YouTube (embedded above) has reached nearly 138 million views. However, the topless, R-rated version of the video was removed from YouTube on March 30, 2013, for violating the site's terms of service regarding nudity.  On Vevo.com, the R-rated version has reached nearly 11 million views.

The song itself has been a worldwide hit, topping the charts in Australia, Canada, New Zealand, Ireland, Germany, the Netherlands, Poland and the United Kingdom, as well as the top ten in Belgium, Denmark, Lithuania, France, Iceland, Italy, Portugal and Switzerland. As of July 17, 2013, it is the second best-selling single of 2013 in the UK.

The song features a catchy beat and chorus, clearly reminiscient of Marvin Gaye's 1977 classic "Got to Give it Up":

Thicke apparently admires Marvin Gaye's style and music, and went so far as to admit that it inspired him in this instance, but denied overtly sampling Gaye's musical compositions when writing Blurred Lines.

When asked by Yahoo! Music's Billy Johnson Jr. about the notable similarities between "Blurred Lines" and Gaye's song, Thicke said "[t]here is no sample." But he admitted, "[d]efinitely inspired by that, yeah.  All of his music ... he's one of my idols."

Sampling is the act of taking a portion, or sample, of one sound recording and reusing it as an instrument or a sound recording in a different song or piece.

Hearing the similarity and likely believing that Gaye's music was sampled without permission, Gaye's family apparently demanded a royalty from Thicke and his co-authors, which they refused to pay.

After reaching an impasse, Thicke and his co-authors pulled the trigger first, suing Gaye's family in federal district court in California this week, seeking a declaratory judgment that the song does not infringe upon Gaye's copyrights.

“There are no similarities between plaintiffs’ composition and those the claimants allege they own, other than commonplace musical elements,” the suit contends. “Plaintiffs created a hit and did it without copying anyone else’s composition.”

Invocation of declaratory judgment jurisdiction is typical when it becomes clear that suit is inevitable, and when an actual case or controversy exists between the parties, based upon the totality of the circumstances.  Assuming Gaye's family asserted a clear claim of copyright infringement and demanded a royalty, and assuming that no ongoing discussions were occurring, Thicke may have been entitled to file a preemptive suit first.

Procedural wrangling aside, in any event, the underlying legal test remains the same. Did Thicke and his co-authors cross the line from inspiration to infringement?

Ironically, that line is rather blurry in this instance.

Sampling an identifiable and substantial portion of Gaye's song would likely lead to a finding of copyright infringement. Thicke has (so far) expressly denied that any form of sampling whatsoever occurred, claiming that the similarities were from simply borrowing "commonplace musical elements."  That distinction is a matter of degree, and will depend upon a close comparison of the two songs.