This post was originally published on GSB's website as a GSB Client Update on July 9, 2018.
Although Section 411(a) of the U.S. Copyright Act states clearly that “Although Section 411(a) of civil action for infringement of the copyright in any United States work shall be instituted until . . . registration [or refusal of registration] of the copyright claim has been made,” not every judicial circuit in the United States has agreed how to interpret this requirement. The U.S. Supreme Court’s recent grant of a petition for writ of certiorari in the case, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, may resolve the current federal circuit split, deciding for the country whether a copyright must be fully registered or just applied-for before a copyright infringement lawsuit can be filed.
Simon Tam of the Asian rock band, The Slants, probably was not envisioning an 8-year-long legal battle when he chose the group’s name. Slant is known as a racial slur for Asians. Tam hoped to strip the term of its derogatory purpose and “reclaim” it by choosing it as a name for his Asian-American band, with hopes of giving it a sense of empowerment. Tam’s attempt to trademark the name with the federal government failed. The U.S. Patent and Trademark Office (PTO) denied the application under the Lanham Act, 15 U.S.C. §1052(a), citing the registration as disparaging. The provision prohibits registration of those marks that “consist of…matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  Tam contested the Trademark Trial and Appeal Board’s (TTAB) decision and the dispute eventually reached the Federal Court.
In March 2016, the popular music streaming service, Spotify, reached a settlement with the National Music Publishers Association (“NMPA”) to cover billions of unlicensed streams from member publishers dating back to the service’s U.S. launch in 2011. Spotify will pay $25 million to publishers and songwriters and $5 million in punitive damages—a sum many are calling an easy break for the billion dollar streaming service. Those who had their mechanical license rights infringed had until June 30, 2016, to opt-in to a settlement agreement between the NMPA and Spotify. The NMPA negotiated the settlement with Spotify on behalf of its members.The pros and cons of opting-in have been hotly debated as class action lawsuits, such as those brought by singer David Lowery and singer-songwriter Melissa Ferrick, have been filed.
“It is time to stop the ageism that permeates Hollywood’s casting process,” wrote SAG-AFTRA President Gabrielle Carteris. On September 24, 2016, California Governor Jerry Brown took a controversial step toward achieving such a goal when he signed the Customer Records bill, AB-1687 (effective January 1, 2017), into law. This new state law requires that Internet Movie Database “IMDb” remove an actor’s listed age upon request by that actor. IMDb is a well-known website in the entertainment industry that offers information about movies, television shows, and actors. Its subscription service, IMDbPro, allows actors to create their own profile page and access job listings posted by industry professionals. Industry professionals directly use the website for casting calls and auditions and have been known to frequently filter out potential actors though information posted on the website. Thus, the broader goal of this law is to alleviate age discrimination in an industry that has been alleged to phase out ageing actors in a discriminatory fashion.
Brexit, the United Kingdom’s (UK) decision to leave the European Union (EU), has made headline news in recent months. Brexit is already impacting trademark rights in Europe, including in the sports and entertainment industry.
New UK Filings Required. Trademark rights are conferred on a jurisdiction-by-jurisdiction basis. Going forward, brand owners will not be able to rely on a single EU trademark filing to cover the same geographic territory in Europe. In light of Brexit, brand owners now need to file trademark applications in the UK as well as the EU to protect their trademarks in the same geographic territory. For years, separate trademark filings in Norway and Switzerland (and other European countries falling outside the EU) have been required. Brexit adds the UK to the list of countries requiring separate trademark applications in Europe.
The ability of tattoo artists to protect themselves from negligence lawsuits got a boost from a recent decision of a New York court. The case of Jackson v. Black Ink Tattoo Studio Inc. drew national interest since the defendants in that case have been featured since 2013 in the VH-1 reality series “Black Ink Crew.” The plaintiff, who claimed that she traveled all the way from North Carolina just to receive a tattoo from Black Ink in New York City, claimed to have experienced scarring from the application of the tattoo. Black Ink, who denied the plaintiff’s condition resulted from Black Ink’s work, requires all of its customers to sign a consent form that provides, in part, as follows:
We have written in the past about patents in the entertainment field, such as one received by the entertainer Michael Jackson for a shoe for his moonwalking. Patents in the entertainment field can also be directed to devices related to musical instruments, such as tuners or supports, or even new ways of recording. But as the Internet and mobile devices have become more prolific, uses of the Internet and mobile devices lend themselves to new entertainment-related ideas and implementations. Generally, these ideas and implementations have been related to music artists, but these technological developments lend themselves to improvements for fans as well.
Kristyn Fields is a former Garvey Schubert Barer legal extern who worked out of the firm's New York office. She was a law student at Brooklyn Law School.
Since the Aereo case, the debate over whether online television services should be regulated in the same way that cable providers are rages on in California federal court, with the recent case against the streaming service FilmOn X (“FilmOn”). FilmOn is facing copyright infringement claims from television networks and countering those claims by asserting that it is eligible for the same compulsory license as other broadcast providers. On July 16, 2015, Judge George Wu agreed with FilmOn’s defense, ruling that the company should be treated as a traditional cable provider and is entitled to a Section 111 compulsory license.
Descending into the atrium of the tower bearing his name, Donald Trump prepared to announce his candidacy for president. Blaring above the reporters’ din, Neil Young’s ferociously populist 1989 “Rockin’ in the Free World” ripped through the speakers.
The content of Trump’s announcement raised hackles in at least two countries. Among the incensed was Young himself—icon of the anti-war movement and avowed Bernie Sanders supporter—who had not consented to Trump’s use of his famous rock anthem.
As boyfriends, girlfriends and the curious-the-world-over google “how to get to the dark web” and “Ashley Madison” in order to find the data dump the Impact Group unleashed on the “dark web” late Monday night, we thought it was a good time to remind the teams that service entertainers and athletes what they can do when your client’s private moments find their way to the very public Internet.
The Sports, Arts and Entertainment Group at Garvey Schubert Barer provides full service legal representation on sports, entertainment and business matters, including handling transactions related to brand management, licensing, joint ventures, venture capital, private equity, technology, the Internet and new media.