Legal Threats Over Use of Music at Political Events Escalate

Music has been played throughout American history during political events, to rouse emotion and stir patriotism.

However, as intellectual property laws evolve along with the culture of politics, several issues have risen to the forefront along with the ongoing rancor between the permanent residents of Hollywood/Nashville and Washington D.C.  As we have previously discussed, Presidential candidates are frequent targets of musicians' ire for using their songs at political rallies.

Most recently, R.E.M. objected to Fox News' use of "Losing My Religion" during coverage of the 2012 Democratic National Convention.  The pro-Democratic band argues that the use of the song falsely conveyed that it agreed with the conservative networks' critique of the DNC as secularist, stating:

REM in Concert / Wikimedia Commons / Flickr user Stark (Stefano Andreoli)

"R.E.M.'s "Losing My Religion" was used in the Fox News coverage of the Democratic National Convention last night. R.E.M. today, through its music publisher, Warner-Tamerlane Music, demanded that Fox News cease and desist from continuing its unlicensed and unauthorized use of the song." 

Michael Stipe added, "We have little or no respect for their puff adder brand of reportage. Our music does not belong there."

The intellectual property issues break down along relatively clear legal lines.

Copyright:  A songwriter possesses copyright to the lyrics and melody of a song. Additionally, performers of the song possess independent copyrights in their recordings of those songs. Both of these copyrights are licensed to the public through performance rights organizations, such as ASCAP and BMI. Most large public venues, such as sports arenas and convention halls, purchase "blanket" licenses from ASCAP and BMI, that permit them to publicly perform any of the songs contained in their catalogs.  (The songwriters and performers each get a cut of the revenue collected through a separate agreement with the performance rights organizations).

For example, at a baseball game, you may hear the choruses of Queen's "We Will Rock You," Twisted Sisters' "We're Not Gonna Take It" and other rousing anthems repeatedly.  The stadium or sports arena has typically paid a recurring license fee to publicly perform these and other songs within their arenas during events, without many restrictions. Twisted Sister then regularly gets a check from ASCAP/BMI.

However, occasionally, there is a technical copyright violation. For example, if the baseball game is broadcast on national television and the song is heard in the background, the musicians may argue that the license agreement did not cover the "synchronization rights" required for television broadcast (although other license agreements may cover this contingency).

Trademark/Right of Publicity/Implied Endorsement:  In the context of political conventions that occur within the licensed arenas, however, things get trickier.  While a public arena may possess a paid-up license to publicly perform the music under their ASCAP/BMI terms without violating songwriters' or performers' copyrights, some musicians object to their songs' use during political events on separate legal grounds.  Specifically, they argue that the politicians' use of the songs during political events in those arenas nonetheless falsely implies endorsement and sponsorship.

As previously noted, there have been a number of lawsuits filed on these grounds against candidates in both political parties.

ASCAP has issued a helpful summary of the law warning politicians to be aware that their public performance licenses do NOT guard against the Trademark/Right of Publicity/Implied Endorsement theories.

It is this authors' personal view that such alternative theories may have legal merit, depending on the facts.

For example, let's assume that a musician can prove in court that consumers (a/k/a voters) recognize a particular song as a form of source identification.

That is, if we assume that a performer can prove that the public immediately perceives a song as having direct associations with the composer and/or the band that performed the song (especially ones that are politically active and highly visible), then the song may be able to function as a trademark.

Further, if a plaintiff can then prove that a politicians' use of that song is likely to confuse a sufficient percentage of the public into believing that the songwriter/band has endorsed that politician or his/her political party's views, then that plaintiff can demonstrate all that he needs to satisfy a court that there is a likelihood of confusion and irreparable harm to his brand.

On the other hand, if the public is savvy enough to assume that the use of a song during a political event does not necessarily reflect the endorsement or approval of the songs' writers or performers and is not likely to be confused, the Plaintiff would not be able to satisfy his burden of proof, and would lose in court.

Finally, the defendant would presumably assert a "fair use" defense, claiming that the First Amendment's guarantee of free speech immunizes it from the accused intellectual property violations.  

Such a defense would probably fizzle out, if the plaintiff could demonstrate palpable harm from consumer confusion as described above.

Both Sides Declare Victory in Red Sole Battle: But Did the Public Lose?

On Wednesday, the United States Court of Appeals for the Second Circuit issued a detailed written opinion both affirming and reversing portions of the District Court's opinion in the epic Christian Louboutin v. Yves St. Laurent fight over red soled shoes.

To recap, Louboutin sued YSL for selling monochromatic red shoes, which included the use of red soles. Louboutin owns a registered federal trademark covering the use of red soles on footwear.

The Second Circuit agreed that Louboutin had demonstrated that it had acquired distinctiveness for the use of red soled shoes, with a notable exception: The Court held that Louboutin had NOT demonstrated distinctiveness was acquired in monochromatic (all red) red soled shoes.

The Second Circuit essentially dismissed several examples of Louboutin red/red shoes as essentially too few to demonstrate secondary meaning, and ordered that Louboutin's trademark be "rectified" to include this novel limitation.

As an initial matter, the Lanham Act empowers "the Court" to correct registrations to correct errors.  It is not clear that "the Court" contemplated by the federal statute was intended to include an Appeals Court selectively amending trademarks as it sees fit, unless the District Court had made a factual finding that such a limitation is warranted and supported by the record.

Here, the District Court had made no such finding and had dismissed the case on broader grounds, which the Appeals Court did not need to reach. Therefore, there is some question as to whether the Circuit Court even had the power it chose to exercise to conveniently dispose of the case.

Second, the Appeals Court's backhanded dismissal of Louboutin's red soled shoe trademark as used on monochromatic shoes was belied by the record which demonstrated that Louboutin had, indeed, used red soles on monochromatic shoes, and that there was even evidence of confusion in Louboutin's consumer survey.  The Circuit Court just dismissed that evidence out of hand, but not very persuasively.

Therefore, the Second Circuit's reasoning reads like an example of "bad facts making bad law." The end result is neither satisfying logically or legally, but disposed of a tough case with an equitable result.

In the end, it is my personal opinion that YSL should never have been sued to begin with, until and unless Louboutin had acquired an incontestable trademark that had been successfully asserted against other, more willful targets first.

If that clear record of a tested trademark had been before the Court, it would have been much more difficult to let YSL walk away unscathed, as it did.

So, where does that leave the public?  Well, the Second Circuit clarified that color can serve as a trademark in fashion, just as in other areas of law, and rejected the lower court's unprecedented "per se" bar against the use of color in fashion.  That, in my personal opinion, was a good start.

It is good law that color can and does function as a trademark in fashion no less than in other industries.

However, the remainder of the opinion did little to add value to the body of precedent on aesthetic functionality, or what level of secondary meaning is necessary to protect color as a trademark.  

So, in the end, YSL walked away unscathed, Louboutin kept his (modified) trademark, and we are left with a rule of law that suggests that brand owners' lawyers should take better care selecting their litigation targets.

Ben and Jerry's Sues Porn Company Over Adult Film Titles

Vermont-based Ben & Jerry's Ice Cream, a subsidiary of Unilever, is known for its creative flavors with names such as “Schweddy Balls” and “Karamel Sutra.”

The ice cream company was not amused, however, when an adult entertainment company used the name “Ben & Cherry’s” to sell X-rated DVDs that intentionally mimicked the ice cream maker’s titles and distinctive trade dress.

Ben & Jerry’s filed a trademark/trade dress infringement and dilution complaint in U.S. District Court for the Southern District of New York against the maker of adult entertainment titles such as “Boston Cream Thighs,” “Peanut Butter D-Cups” and “Chocolate Fudge Babes.”  The District Court has entered a Preliminary Injunction against the Defendant’s further use of the brand names.

Adult entertainment companies have faced similar trademark and trade dress litigation before, and enjoyed only mixed results when asserting the parody/free speech defense in response to the Plaintiff's assertion that the parodies are too close, and are likely to confuse consumers and dilute their famous brands.

For example, in the late 1970's, the Dallas Cowboy's Cheerleaders sued various distributors of "Debbie Does Dallas."

In the Dallas Cowboys v. Pussycat Cinema, an adult theater in New York City that was showing the films was enjoined by the District Court.

The Dallas Cowboys Cheerleaders successfully argued that their famous uniforms were copied by the film's producers and used in advertising without their permission in a manner that was likely to cause confusion and dilution.  The ruling was affirmed by the Second Circuit Court of Appeals.

However, in 2001, George Lucas sued the producers of a Star Wars parody titled Starballz.  The District Court in California held that "the Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or Lucasfilm."

The mixed rulings have only emboldened the adult film industry to press its luck in recent years, making such sophisticated "parodies" even with celebrity lookalikes, as depicted below:

The Fuzzy Line Between Blogging and the Real World

Some commentators and active readers of our blog have asked us why we haven't covered certain noteworthy and topical stories that are related to brand protection and intellectual property in the news recently.

For example, we deliberately haven't blogged about the Apple / Samsung case, the Zephyrs / Victoria's Secret litigation, and several other major cases in the news that relate to brand protection.

The reason is simple:  We may be (or were at some point) involved in those cases as litigation counsel and/or consultants to the parties, and our clients understandably prefer that we confine our statements about those cases to the courtroom or to client-approved press releases.

To be sure, the dividing line between new forms of social media/blogging and being a practicing lawyer can become blurry.

Bar Associations have struggled with offering guidance to practitioners as to when and how to use blogs and social media with respect to cases they are directly involved in.  The ABA Journal notes that blogging can be dangerous and can even lead to serious ethics violations.

As a general matter, we have found that the best solution is for us to confine our blogging and commentary to cases that we are not directly involved in.  Thank you for your understanding!

Julia Child's Legacy: Trademark Litigation Over Her Oven Preference

Julia Child's Kitchen on Display at the Smithsonian

Julia Child's foundation and a home appliance-maker have filed dueling lawsuits over whether the maker of the Thermador oven can use the legendary chef's name and image without violating trademarks.

BSH Home Appliances, which makes Bosch, Thermador and Gaggenau appliances, sued the Julia Child Foundation for Gastronomy and the Culinary Arts in Boston Federal Court on August 24.


Child's foundation responded Tuesday with two federal lawsuits in Los Angeles, one against BSH and the other against the DGWB Advertising firm.


BSH seeks a declaratory judgment that it can use Child's name and image in its advertisements without violating her trademarks.
 

It claims that "Ms. Child's preference for and use of Thermador products, both on the set of her popular television show 'the French Chef' and in her personal kitchen, is well-known and widely documented.  Plaintiff is informed ... that Ms. Child's personal kitchen was donated to the Smithsonian Institution in Washington, D.C., upon her passing, and remains on display to this day much as it appeared in her Massachusetts home, including her Thermador oven.


"The Plaintiff has used images of Ms. Child and references to the well-known historical fact of her use of Thermador products in various media, including on its website and on its social media pages. These uses do not state or imply any endorsement by Ms. Child of Thermador products.  Rather, plaintiff's use of these photos and references to Julia Child's name and use of Thermador products reflect on the long history, significance and influence of Thermador products on American society and culture, and Ms. Child's documented and well-known use of these products."
     

BSH claims it filed its complaint in response to a letter from Child's foundation, in which the foundation "claimed exclusive ownership and control of the name, image, likeness and celebrity identity of the late Julia Child ... [and that] plaintiff's use of the Child publicity rights and Child IP rights constitutes copyright infringement, trademark infringement and a post-mortem violation of Julia Child's right of publicity."
     

But BSH claims that its "use of the image and name of Julia Child are not directly connected to the sale of any merchandise, but rather are factual references to Julia Child's well-known use of Thermador products, placed in proper context, including on a timeline chronicling the company's history and in the 'Our Heritage' section of the Thermador website."
     

The complaint continues: "The timeline on Thermador's website chronicles important events in the company's history, dating back to its founding in 1916. The reference to Ms. Child appears around the 1970 mark of the timeline, and states that 'Julia Child uses Thermador in her critically acclaimed PBS TV Series.'  

It is accompanied by an image of Ms. Child on the set of her PBS television show.
     

Another reference on the timeline states: '2001 - Julia Child donates her kitchen to the Smithsonian, further cementing the brand's place in popular American culture.'
     

BSH seeks a declaratory judgment that its use of Child's name and image does not infringe upon any trademarks or copyrights, and that because Child lived in Massachusetts when she died, Massachusetts state law should be applied to any future claims of infringement.


The Evil Dead: Consequences By Default

Sam Raimi’s Renaissance Pictures has won a default judgment in a trademark infringement lawsuit filed in California federal court against an unauthorized sequel to The Evil Dead, called Evil Dead 4: Consequences.

The Evil Dead is a horror film franchise started by Sam Raimi.  The original movie was produced in 1981, which led to the release of The Evil Dead II in 1987 and Army of Darkness in 1992.  

The successful series spun off Evil Dead-related stories in other formats such as video games and comic books.  An authorized remake of the original film is reportedly in the works and will be released around Halloween 2013.

Independent film studio Award Pictures had been in production of Evil Dead 4: Consequences, when Raimi filed a trademark infringement lawsuit, alleging that the unauthorized sequel was likely to cause consumer confusion.

However, Award Pictures’ president Glenn MacCrae failed to respond to the Complaint, leading to the entry of a default judgment in Raimi's favor.

The default judgment includes a permanent injunction stopping Award Pictures from using Renaissance’s “Evil Dead” trademark for their film or using any marketing that is likely to confuse the public into believing the film is an authorized sequel.

MacCrae told The Hollywood Reporter that he was unable to pay for a lawyer to respond in court due to Raimi’s interference allegedly “destroying” a financing deal with Anchor Bay Entertainment. 

According to MacCrae, attorneys were demanding “tens of thousands of dollars” to take on the case. 

However, MacCrae has now reportedly hired a lawyer and claims that he is "very definitely contesting Renaissance’s lawsuit."