Monthly Archives: January 2015

Beer TM Today, Gone Tommorow: IPA Spat Goes Flat

“The room was humming harder, As the ceiling flew away, When we called out for another drink, The waiter brought a tray.” A Whiter Shade of Pale by Keith Reid, Gary Brooker (recorded by Procol Harum)

Surprise turned to Schadenfreude last week in trademark land when micro-brewer Lagunitas sued micro-legend Sierra Nevada for trademark infringement. The mark at issue? IPA–a common acronym for the style of beer called “India Pale Ale.” For years, Lagunitas’s IPA packages featured the letters IPA in large, highly stylized script. And Lagunitas saw red when Sierra Nevada changed the packages for its IPA to put those letters front and center:


Scores of brewers offer up their takes on this hoppy variety of pale ale. And many call it “IPA.” So the odds that any one company could snag “IPA” as a trademark would seem long at best–not the makings of a good bar bet. But those long odds did not deter Lagunitas. In its lawsuit, the company focused on style, not substance. According to Lagunitas’s complaint in Federal court, the letters IPA weren’t the issue. Sierra Nevada’s offense was copying the large-letter format and style of Lagunitas’s IPA logo.

But in this era where microbreweries are giving the beer establishment a run for its money and craft beer isn’t just for hipsters anymore, the nuances of trademark law sometimes can get lost on the blogosphere. Rather than stirring up sympathy, the lawsuit sparked a brew-haha of criticism, with Twitter and other social media sites overflowing with outrage over the idea that one brewer could monopolize IPA. So even though that wasn’t Lagunitas’s aim, the brewer responded to the backlash with contrition reminiscent of a morning-after dose of reality. In a Twitter post, owner Tony Magee wrote: “Today, I was seriously schooled . . . Tomorrow morning we’ll drop the infringement suit.[and] get back to answering other questions.”

So Lagunitaas learned a valuable lesson. When it comes to IP rights for IPA, size apparently doesn’t matter.

QUOTE OF THE DAY: “I am a firm believer in the people. If given the truth, they can be depended upon to meet any national crisis. The great point is to bring them the real facts, and beer.” Abraham Lincoln

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Turtles to Satellite Radio: Get Sirius About Pre 72 Public Performance Royalties

“Got a idea tell you what let’s do
Let’s go out to that place on the Turtle Bayou
We’ll maybe get lucky, maybe get shot
It couldn’t be half of the trouble I got” Turtle Bayou by James McMurtry

You remember the Turtles? The mid ’60s group best known for the hit song “Happy Together?” The semi-parody love song that ended with the line “So Happy Together. How is the weather?” Not exactly the type of sheer profundity that propelled Lennon, McCartney, Dylan, and Paul Simon into Rock and Roll immortality. And yet, when it comes to the music of pre ’72 AM radio, the cornucopia of rock, soul, pop, psychedelic, country, and easy listening that all managed to coexist on stations such as WABC in New York and WFIL in Philly, the Turtles just may go down in history–not for their music, per se, but for their persistence in pursuing their legal rights.

It all has to do with the interplay between Federal Copyright law and state protection. In general, where Copyright is concerned, Federal law trumps state law under a doctrine called “preemption.” Simply but, when Congress passes a law to implement a constitutional right, like copyright or patents, the states generally can’t step in with laws of their own–otherwise, there could be overlap, inconsistencies, and confusion. But what about areas where Congress has chosen not to act? One of those areas concerns so-called “public performance rights” for songs recorded before 1972. Under current Federal Copyright law, when a satellite radio station plays a song recorded after 1972, the station pays royalties to the composer and to the performer. The latter royalty is called the “public performance right.” But this performance right applies only to songs recorded after 1972. Essentially, satellite radio gets to play pre-72 recording for free, according to Federal Law.

Many musicians with hit songs from before MTV object to this free-pass for old recordings. They claim that it robs them of income if not livelihoods. Facing the music, several states have passed laws to “correct” the situation. Not coincidentally, the biggest states to do this–New York, California, FLorida–are where many disgruntled makers of Golden Oldies live and work today.

Sirius satellite radio has been fighting these state laws; and the band that has been their defender is not the Beatles, the Rolling Stones, The Who, or any other giants of the Woodstock era. No, it’s the Turtles who have come out of music history’s shell to press the case for pre ’72 royalties under state law.

And like that mythical contest that pit a speedy and cocky frontrunner against a slow but steady underdog, the Turtles have been winning the race. Just last week a Federal Court in New York affirmed a ruling that the satellite radio must pay the tab for pre ’72 public performance royalties. Judges in California have reached the same conclusion, and a Florida court is expected to rule on the issue soon.

So when it comes to listing the most influential animal-themed bands of the 20th Century, the Turtles may be an afterthought after BYRDS, ANIMALS, EAGLES, CRICKETS, and BEATLES; but all of these groups have either disbanded, been decimated by the ravages of time, or are infamously acrimonious. With their legal legacy, however, the TURTLES appear to be still Happy Together.

QUOTE OF THE DAY: “One of the nice things about a favorite pop song is that it’s an unconditional truce on judgment and musical snobbery. You like the song because you just do, and there need not be any further criticism.” Henry Rollins

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Legal Eagle or Fairly Mocked Bird? Don Henley Wings Into Court

“He’s a tortured artist. Used to be in the Eagles. Now he whines. Like a wounded beagle. Poet of despair! Pumped up with hot air!’ Don Henley Must Die, by Mojo Nixon

Ask a serious music fan about Eagles and their singer Don Henley, and you’re likely to hear sentiments not so different from Mojo Nixon’s satiric verses in “Don Henley Must Die.” Sure, Mr. Henley has been outspoken in support of artists’ rights, testifying before Congress on a symphony of issues relating to recording industry practices. And his positions on environmental issues, reflected in his stewardship of the Waldon Woods Project, have been pristine.
So why do music fans like me–whose tastes swing between the Eagle’s forerunners and many of the band’s progeny–cringe at the thought of Don Henley–the man and his music? Why, when we hear him crooning on “The Boys of Summer,” do we immediately pray for an early frost; for the top to go up and wipers turned on in old Don’s California idyll? Could it be that the maitre d’ at the Hotel California, the head honcho in that band of Desperadoes, has seen one too many Tequila Sunrises and simply lost his sense of humor?
Judging from Mr. Henley’s latest legal foray, it does not take a 12-part podcast from NPR to conclude that when it comes to his “Right of Publicity” Don Henley has checked his funnybone at the courthouse door.
Here’s the story. For years, menswear companies from J. Crew to Joe A. Bank have sold long-sleeved, cotton shirts with crew collars and three or four button fronts. These casual shirts are called Henleys–taking their name from the rarefied world of rowing and regattas on the Thames near Oxford. And for decades, if not centuries, “to don” has meant the act of pulling on a uniform–such as a jersey and, yes, a Henley tee. So Englishmen may have been donning Henleys since Henry VIII serenaded Ann Boleyn with “Welcome to the Hotel Tower of London, such a lonely place.”
Henry, being king of court, could dispense bad tunes and swift justice however he wished when spurned by a wife or rival.
Don Henley, however, must resort to the U.S. courts to protect his name. And that’s what he did when he took offense at an advertisement by U.S. clothier Duluth Trading, a company known for edgy, sometimes cheeky ads for traditional clothing geared to tradesman and outdoor enthusiasts featuring Giant Angry Beavers, Groping Grizzlies, and Unruly Bushes. One ad, for Duluth’s “Long-Tail Tee,” even proposes a “Cure for Plumbers’ Butt.” Cheeky indeed.
But when, in advertising its long-sleeve button pullover shirt, Duluth urged customers to “don a Henley, take it easy,” the Eagles singer/drummer didn’t appreciate the humor. Instead of laughing with Duluth he sued Duluth–in California, where else? Henley alleges in his complaint that Duluth’s ad for Henley shirts deliberately invokes Mr. Henley’s name and his association with the Eagles, and are aimed at “exploiting the celebrity of Mr. Henley and the Eagles’ hit record.” Mr. Henley’s complaint also alleges that consumers, not Henley, are the real victims: “Large numbers of consumers . . . will unquestionably believe that Mr. Henley is associated with and/or has endorsed {Duluth]and its products . . .”
Duluth, for its part, seems to be taking things in stride, as its whimsical ads might suggest. “The advertisement is obviously a joke (something we presume not even Mr. Henley disputes),” Duluth wrote in asking the court to toss Henley’s suit. “It is self-evident that the use that was made of Mr. Henley’s name was a joke intended to highlight the coincidence that [he] shares his last name with a ubiquitous casual shirt and that his first name means ‘to wear.'”
So we have Duluth’s claims of Freedom of Speech and Expression lined up against Mr. Henley’s right to protect his name and image from being used to confuse or deceive consumers and his further right to control who may or may not exploit his name for commercial gain. There’s just enough traction on both sides that the court may have less than a peaceful, easy feeling in deciding who’s right. The outcome likely will turn on whether the court finds Duluth’s ad “transformative”–that is, did the parodist or satirist infuse the work with enough creativity and original expression to merit the First Amendment’s protection. In other words, will the judge or jury get the joke, and think the joke is clever enough to side with Duluth? Or will they find that the joke is just a tepid excuse for identity theft. Cases like this usually settle, so we won’t likely know how and where the California court would draw the line. But we can safely say, whatever the outcome, that Duluth Trading is a far cry from all those “Desperadoes” Henley and his compadres glorified through their music. Perhaps the irony is lost on Henley; the man who entreated notorious thieves and killers Frank and Jesse James to “keep on riding, riding, riding,” has a short fuse when it comes to Duluth using a clever pun to sell Henley tees. But after living in the fast lane so long, Henley apparently know only one way to react when provoked–take it to the limit–one more time.

UPDATE: On January 22, the Judge denied Duluth’s request to throw the case out based on its so-called obviously-a-joke-defense. In a terse ruling, the Judge wrote: “Even assuming for the sake of argument that the transformative use test of Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001) applies, Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.” Tranlation from legalese to plain-speak: Just because “Take it easy-don a henly” may be funny, doesn’t automatically mean Duluth is off the hook. To paraphraase “Take It Easy,” the Court did what Duluth didn’t want it to do: it said “maybe.”

QUOTE OF THE DAY: “It is the ability to take a joke, not make one, that proves you have a sense of humor.”
Max Eastman


Filed under copyright, IP, Right of Publicity, trademarks, Uncategorized