“So this is the Day of The Dead” from “We All Lose One Another” by Jason Collett
Trial of the Century! For most Americans, those words conjure two letters—O.J. But for the past week or so, O.J. arguably has been upstaged by an unlikely figure—Dan Aykroyd.
That’s right, Dan Aykroyd–one of Saturday Night Live’s original “Not Ready For Prime Time Players” who won the fame as the staccato pitchman in SNL’s “Bass-O-Matic” infomercial parody, and who cemented his place in comedy’s pantheon with the original “Ghostbusters” and “Blues Brothers” films. That Dan Aykroyd has evolved into a trademark crusader for his real-life brand of vodka called “Crystal Head,” sold in a distinctive skull-shaped bottle:
As with most things, success breeds imitators. For Crystal Head, imitation came in the form of rival KAH brand of tequila, also packaged in skull shaped bottles. Unlike Aykroyd’s brand, those skulls were opaque, brightly colored affairs:
KAH founder Kim Brandi claimed that Mexico’s iconic Day of The Dead imagery had inspired her skull design. Aykroyd and his business partner Globefill, Inc., didn’t buy it. They sued for trademark infringement back in 2010. But in a 2013 trial, Brandi beat back Aykroyd’s infringement claim. She testified that she hadn’t even seen Aykroyd’s skull bottles. And the jury bought it.
Dan Aykroyd didn’t give up. He and his lawyers appealed and won a new trial. That new trial, which unfolded last week in a California courtroom, featured showmanship, skullduggery, and scandal worthy of one of Aykroyd’s big-budget Hollywood movies. Aykroyd cast himself in the role of star witness for the prosecution. Wielding a tape measure, Aykroyd systematically compared the features, angles, and dimensions of his skull bottle to Brandi’s. He also testified that confusion in the marketplace was threatening his brand. Claiming to have found a broken glass inside a KAH bottle, Aykroyd told the jury: “I thought, even more reason for me to be concerned about source. What if someone got hurt? And for someone to think we have a product on the market that’s inferior to our vodka, that’s unacceptable.” Aykroyd also testified that KAH tequila “obviously” was a confusingly similar copycat: “I really couldn’t count about how many people who have come and asked us about our new tequila in the skull bottle. We had to say, ‘It’s not ours.’”
Brandi, for her part, argued that Aykroyd shouldn’t be able to block all skull shaped liquor bottles, especially ones like Brandi’s, whose bright colors evoked iconic Mexican imagery. And Brandi stuck to her story, insisting that she hadn’t seen Aykroyd’s skull bottles when decided on the Day of The Dead theme for her tequila bottles. She brushed-aside the similarities Aykroyd had pointed out as “coincidence.”
That’s when the real drama happened. In a finale worth of Perry Mason, Aykroyd’s legal team unveiled a bombshell—the guy Brandi hired to design her bottles. This surprise witness testified that Brandi handed him one of Aykroyd’s skull bottles and told him to make a plaster cast of it so that she could model her design on Aykroyd’s distinctive skull container.
Armed with this testimony, Aykroyd’s lawyer told the jury that Brandi had lied. Four hours later, the jury returned its verdict—guilty as charged.
So now, seven years after the story began, Dan Aykroyd and his legal team are close to achieving their perfect ending. All that remains is for the Judge to decide the remedy. That phase of the case is still to come. For now, Aykroyd has the satisfaction of knowing that, at least for now, justice delayed is not justice denied.
The name of the case is Globefill Inc. v. Elements Spirits Inc., 2:10-cv-02034, U.S. District Court for the Central District of California.
Quote of the day: “Alas, poor Yorick! I knew him, Horatio, a fellow of infinite jest, of most excellent fancy. He hath bore me on his back a thousand times, and now how abhorr’d in my imagination it is! My gorge rises at it.” Hamlet by W. Shakespeare
“I need a unit to sample and hold. But not the angry one. A new design.” Sample and Hold, music and lyrics by Neil Young Digital sampling has become a staple of the recording ind…
Source: Free Samples? Or Risky Riffs?
“I need a unit to sample and hold. But not the angry one. A new design.” Sample and Hold, music and lyrics by Neil Young
Digital sampling has become a staple of the recording industry. What’s sampling? It’s taking a snippet from one recording and splicing it into a new one. Typically, the sample is just a few bars, even a few notes. And it’s likewise typical for the producers and artists to digitally tweak those few bars or notes to alter their pitch or key and adding additional embellishments. As often or not, the listener is unaware that the “new” recording includes a “re-purposed” sample.
But is it kosher to lift a fragment from one copyrighted recording and implant into a new one? That question has produced judicial sparring that rivals the most thorny of Talmudic conundrums.
Until last week, only one U.S. Circuit Court of Appeals, the Sixth Circuit, whose territory includes Nashville, aka “Music City,” had weighed in on this issue. It did so with Draconian precision, laying down a bright-line test. The case was Bridgeport Music Inc,. v. Dimension Films. The sample in question consisted of a chunk of guitar funk plucked from a recording of “Get Off Your Ass and Jam” by George Clinton. Specifically, a two-second sample from a four-second guitar solo was copied, the pitch was lowered, and the copied piece was looped and extended to 16 beats. Neither the brevity of the sample nor the transformation it underwent was enough to avoid a finding of copyright infringement.In the Sixth Circuits view: “[a] sound recording owner [and only a sound recording owner] has the exclusive right to ‘sample’ his own recording.” And while a “de minimis” exception applies to other types of works (that, is, you likely can copy a phrase or two from a 400 page book without infringing the author’s copyright), the Sixth Circuit held that sound recordings are different. Samplers hoping to invoke the de minimis exception need not apply. In other words, if you want to sample, get a license and pay the piper.
But doesn’t that rule stifle creativity, which is what copyright law’s supposed to encourage? Not according to the Sixth Circuit. Leaning towards protecting the commercial interests of record labels and artists, the Court rejected a free-ride philosophy in favor of a market-driven approach. The Court identified two main reasons why musicians sample–either the sample adds value to a new recording because listeners recognize its original source, or it adds value by saving the cost or recording the same riff a second time. In either case, the sampler gets something of value, and should be willing to pay for it. Let the market decide the price.
But just last week, the Ninth Circuit Federal Court of Appeals, which includes L.A. within its jurisdiction, took the Sixth Circuit and its bright line approach to task. That case, VMS Salsous v. Ciccone (aka Madonna) also involved mining a prior recording for a musical sliver and then sliding it into a new track. In this case, the sliver was a .23 second “horn hit”–four trumpet notes forming a single chord, that originally appeared in the mega-hit dance track Ooh, I Love It (Love Break), recorded by producer Shep Pettibone in the early 1980s. In 1990, working with Madonna, Pettibone reached back to Love Breaks to salvage that same horn hit, doctoring it up in the process, transposing it to a new key, truncating it, and even adding other sounds to the chord itself.
If Pettibone and Madonna had worked this musical alchemy in Nashville and had been sued for copyright infringement there, they would have been found guilty under the Sixth Circuit’s Bridgeport decision. The Ninth Circuit, however, concluded that its sister court’s logic was badly flawed and that its refusal to apply the de minimis exception was dead wrong. The panel of three West Coast judges saw no basis in the Copyright Law or its legislative history to treat sound recordings any different from other works, such as books. That’s good news for recording artists who happen to be sued in L.A. or other places within the Ninth Circuit. But the Ninth Circuit’s ruling doesn’t change the Sixth Circuit’s decision, and it leaves artists in New York, Austin, Chicago, St.Louis, and other music towns on uncertain ground.
Such a spat between two Courts of Appeal, however, may be the overture for the Supreme Court to step in and call the tune on digital sampling. Should music sampling be free, as the Ninth Circuit found? Or should producers have to pay to play, as the Sixth Circuit concluded? The answer may not be blowin’ in the wind, but its not exactly clear either. In other words, don’t be surprised if the Supremes refuse to decide whether digital samplers must “stop in the name of law” and leave the issue for Congress to sort out. And that could prove to be a “long and winding road.”
QUOTE OF THE DAY: “People go back to the stuff that doesn’t cost a lot of money and the stuff that you don’t have to hand money to over and over again. Stuff that you get for free, stuff that your older brother gives you, stuff that you can get out of the local library.” Frank Black aka Black Francis.
“Cheer up sleepy Jean, oh what can it mean for a daydream believer?” Daydream Believer, words and music by John Stewart, originally recorded and performed by The Monkees.
The New York Times Magazine recently featured a tale ripped from the comic books of my youth. The story involved mystery, intrigue, villainy, betrayal, desperate living, a fortune won and lost. And what rip-roaring saga would be complete without a trademark dispute?
At the center of this story are “Sea Monkeys,” the amazing critters advertised in the pages of Batman, Superman, and Archie comics. If you’re not of a certain age and don’t know what I’m talking about, here is a vintage ad for the “Monkeys of the Sea:”
Generations of kids flirted with the notion of ordering Sea Monkeys. But that was before e-commerce, when it actually took effort to clip the coupon, address an envelope, and go to the Post Office for postage. It was easier to just turn the page.
The few of us who actually grubbed up the $1.25 purchase price were sorely disappointed. You see, “Sea Monkeys” is a misnomer. While they come from ocean waters, (and still do today) there’s no sapien at all in these critters. They’re just freeze-dried brine shrimp. Like Folger’s Crystals, they can be re-animated—brought to life—merely by adding water. Some managed to keep their Monkey colonies alive for weeks, month, or even years. But most saw them die within days, the novelty lasting only hours before boredom and neglect set in.
Sea Monkeys are the brainchild of the late Harold von Braunhut, who died in 2003. Dubbed a “Mad Genius” in a 2011 article by Evan Hughes, Von Braunhut’s inventive genius did not end with Sea Monkeys. He’s also the guy behind X-Ray Specs, another comic book staple that promised to give the wearer the power to see through buildings, clothing—even their own skin. Who wouldn’t want a pair?
Say what you will about the merits of Mr. von B’s technical acumen, he knew his audience—gullible kids with time on their hands, fertile imaginations, and spare change to spare. He amassed quite an empire.
And that’s where trademarks come in. When he died, his widow struck a deal with a toy company with a name—Big Time Toys—that sounded more like a cartoon enterprise (think Wiley Coyote’s ACME) than a real-world business. According to a lawsuit filed by the widow von B, she merely licensed Big Time to distribute Sea Monkeys.
The Big Time bigwigs see things differently. They claim that the money they’ve paid over the years was part of an installment plan to buy the Sea Monkeys trademark outright. Now, they claim, they rule the Sea Monkey jungle, leaving Mr. von Braunhut’s widow out in the cold—literally. Like Big and Little Edie Beale, (Jackie Kennedy Onassis’s kin who lived in squalor in their Long Island mansion), Mrs. von B orchestrates her Big Time trademark battle while huddled up in a crumbling Maryland estate on the shores of the Potomac river, with only a wood fire for heat. Like a good comic book plotline, this one has been going on for years. And there’s more than spare change at stake. One report estimates Big Time’s annual revenues from Sea Monkeys at over $3 million. And of course, there’s the classic theme of good versus evil, David versus Goliath, with the Sea Monkeys trademark as the widow von B’s slingshot. But like all good things, Sea Monkeys magic is not eternal. Now, they come from China. And old time fans complain that the Chinese variety don’t have the same spunk as the original formula. Hey, there’s a potential new slogan for the 2016 Presidential campaign—Make Sea Monkeys Great Again.
QUOTE OF THE DAY: “Monkeys are superior to [humans] in this: when a monkey looks into a mirror, he sees a monkey.” Malcolm de Chazal
“Please Papa can I go. Down to Richmond to the traveling show. Please Papa don’t you say I can’t. I just want to see the elephant.” See The Elephant, music and lyrics by James McMurtry.
I’m not a lucky person. I’ve never won the lottery, not even a five-dollar scratch-off. And when it comes to art, I’d have better luck at a raffle drawing than drawing an object, portrait, or thing. But this past weekend, I found myself in front of a booth run by Martin Guitar being invited to enter a contest that would require both luck and artistic talent to win.
For those not familiar with the hierarchy of guitar-dom, C.F. Martin & Co. of Nazareth, PA. occupies the pinnacle of the acoustic guitar realm. (For those really not familiar with these six and 12 string instruments, “acoustics” are the hollow wooden ones).
The contest seemed simple—it was part of Martin’s “Draw an Elephant, Save an Elephant” campaign directed to raising awareness for the plight of that endangered species. The connection between elephants and guitars seemed a bit obscure, considering that the pachyderms are more likely to stomp on a guitar than to fingerpick one. But who was I to scoff at a worthy cause? Besides, I’ve been tuned-in to the evils and perils of poaching elephants in the jungle ever since watching Tarzan and the Ivory Hunters at a 25-cent Saturday matinee back in the day. As it turns out, Martin Guitar has a long history of environmental stewardship. Years ago, Martin Guitar substituted a synthetic for the ivory used on its instruments.
To enter this contest, #Save Elephant, all you had to do was draw an elephant and you were eligible to win a prize. Pretty simple. But to me, it was daunting. I had been kicked out of remedial art class in elementary school. So my “flight” instincts kicked-in.
But the folks running Martin’s booth were friendly, and my son, a graphic designer, egged me on. I decided to give it a shot. After all, we were at The Newport Folk Festival, we’d been enjoying energetic and passionate performances across three stages strategically placed around an old fortress that once protected Rhode Island from pirates and non-musical British invasions. The sun shone and spirits were high. And I was surrounded by an array of gorgeous C.F. Martin guitars—the same brand made by this family company since 1833 and played by legends and musical greats for over a century. Hank Williams strummed a Martin model D-28 that Neil Young now owns and plays in concert. Woody Guthrie owned several Martins. And Bob Dylan played a Martin guitar before famously picking up an electric Fender Stratocaster at Newport 50 years ago this past week, shattering the folk music world, prompting boos from the crowd, and changing popular music forever. (A 50th anniversary tribute to this seminal moment from 1965 capped this year’s Newport weekend. The infamous Fender was on hand, strummed by Taylor Goldsmith, a member of the indie-folk band Dawes, leading a soaring version of Maggie’s Farm, backed by keyboard legend Al Kooper who played the same organ lines when Dylan performed that song five decades earlier.)
Martin was offering one prize per hour, and for all I knew, a guitar could have been one of them. So rather than succumb to my inhibitions and phobias, I reached for a pen and began drawing my elephant. I won’t say it was elegant. I won’t say is was attractive. But my drawing definitely captures a certain elephantine essence. I eschewed cubism and abstract expressionism for my own brand of post-modern realism, that is to say, you’d have no trouble recognizing the trunk, ears, tusks, and stumpy legs of my elephant masterpiece.
I signed my work, filled out the entry information, and went back to enjoying music and Newport Harbor breeze.
About an hour later, my cell phone rang. It was a call from “Allentown, PA.” Not knowing anyone from that part of the Keystone State, and being in the middle of a migration from one festival stage to the next, I almost declined the call. But instinct urged me to answer. “This is Martin Guitars. You’re our twelve-o’clock winner,” the caller said. I froze, disrupting the stampede of festival foot traffic, then I headed to the Martin Guitar booth. There I met Skip, who congratulated me and showed me a table piled with prizes. No, the guitars weren’t part of the contest. But I got to select a t-shirt with the original Martin logo and lettering, direct from the company archives:
Admiring the logo, I mentioned that when I’m not attending music festivals and concerts, I’m a trademark lawyer, and told him about my interest in brands and their histories. We then discussed, how, as with many brands, the Martin logo and iconography have evolved. But the essence of Martin’s brand identity has remained constant through the use of the C.F. Martin name, and through continuous use of Martin’s simple, iconic, headstock design:
I then learned from Skip that Martin Guitar was no stranger to intellectual property battles. A few years ago, on a visit to China, the company’s sixth-generation CEO, Chris Martin, discovered a collection of guitars that looked like genuine Martins, but were actually poorly made counterfeits. (Where a genuine Martin takes weeks to make by hand and may sell for several thousands of dollars, the Chinese company was mass-producing its ersatz Martins and selling them for a few hundred dollars each). It turned out that another company had registered Martin’s trademark in China, and was hijacking Martin’s reputation under the protection of Chinese law. (Michael Jordan faces similarly vexing copycats of his name and the “Jumpman” logo.)
Martin took action, registering the shape of its iconic headstock as a trademark in the United States Patent and Trademark Office:
(Registration No. 3,048,307). Martin also recruited Pennsylvania Senator Robert Casey to come to its aid. But the problems Martin faced in China stem from that country’s legal system. Chinese trademark law protect the first company to file for a mark in that country, even if that company is hijacking a brand that’s famous elsewhere in the world. And the law in China lets that company sue if the Real McCoy tries to sell its genuine goods in China.
Martin Guitar’s experience in China highlights the need for companies with strong U.S. brands and worldwide reputations to take preemptive action. Brand owners need to be proactive, aggressive, and creative. They should consider trademark registrations for key brand names, logos, and shapes in key countries, especially ones like China with reputations for counterfeiting. Like Martin Guitar, don’t just register words, look at products shapes and designs, which can also qualify for protection under trademark and patent law. And be vigilant. Otherwise, like the elephants that gave rise to this story, a famous trademark may be prone to poaching, which can weaken a brand, and in rare cases, drive it to the point of extinction. And the last thing anyone needs is another crude drawing from me trying to save another endangered species.
QUOTE OF THE DAY: “Sometimes the nicest thing to do with a guitar is just look at it.” Thom Yorke.
“Back then long time ago when grass was green. Woke up in a daze. Arrived like strangers in the night.
Fab – long time ago when we was fab. Fab – back when income tax was all we had”
When We Was Fab music and lyrics by George Harrison
Just as the sun rises in the East, bands break up. It’s a fact of life. Rivalries, jealousies, egos, long rides in cramped vans, and the passage of time all act like tectonic plates clashing and grinding and leading to gaping fissures that cannot be mended. And so, The Beatles, Cream, Crosby, Still, Nash & Young, Fleetwood Mac, The Eagles, and countless others have cracked under the pressures and pitfalls of fame and fortune. Some have managed to forge truces after their heydays have passed, hoping to cash in on the heady combination of nostalgia and swelling bank accounts of their prosperous Baby-boomer-turned AARP-member fans.
But some breakups are so rife with vitriol that they are irredeemable. So it was with Creedence Clearwater Revivial, the 1960s stars founded by John Fogerty and his brother Tom. Despite a string of top 10 classics including Proud Mary, Heard It Through The Grapevine, Fortunate Son, and Who”ll Stop The Rain, CCR imploded in a burst of acrimony fueled in part by leader John Fogerty and his feud with record mogul Saul Zaentz over song rights and royalties. So bitter was Fogerty that when he released his smash solo comeback record “Centerfield” in 1985 after a 9-year hiatus, it included the song “Zanz Can’t Dance” with the lyric: “Zanz can’t dance but he’ll steal your money.” Things got so bad that Fogerty was eventually sued for plagiarizing his own music by Zaentz’s label Fantasy Records.
Now, the tables have turned with Fogerty in the position of plaintiff in litigation with his former CCR band mates. A few years back, Fogerty sued to block them from performing as Creedence Clearwater Revisited.” That suit eventually settled: Fogerty agreed to let them use that name, but only if both band mates were part of the band, and then only if they shared a cut of their ticket and merchandise sales with Mr. Fogerty.
Now, that détente has unraveled as “Revisited” hit the road with just one former “Revival” member, and without paying the money they owe Fogerty. As reported today in IP 360, Fogerty suit asks for an injunction to stop Revisited from using the Creedence Clearwater name at two upcoming California shows. He also asks for the money he’s owed since his ex-mates stopped payments a few years ago.
So once again, John Fogerty is singing the blues for an audience of 1 judge and 12 jurors. His legal woes illustrate the inherent tension between law and music–Fogerty followed the playbook by inking a contract that was supposed to control who, when, where, and how his former band mates could use the band name that Fogerty propelled to fame with his signature lead vocals. But when one party strays from the terms of the deal, the only recourse is lawyers and lawsuits, which can sometimes cost more in fees, time, and trouble than the lawsuit is worth.
But it’s not just about money. It’s about reputation and principle. And so, like the iconic steamer Proud Mary, John Fogerty keeps on turning the big wheel–this time, however, it’s the wheel of justice.