Category Archives: IP

September 14, 2018 · 2:49 pm

Chill Another ‘chella? Not So Fast, Judge Tells Coachella Music Fest.

“By the time we got to Woodstock, we were half-a-million strong.” Woodstock, music and lyrics by Joni Mitchell, recorded by Crosby, Stills, Nash and Young.

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The countdown has begun, with less than a year until Woodstock turns 50. Like Watergate a few years later, Woodstock occupies that rarefied world of one-word names that conjure up not just a place or an event, but a cultural watershed. Although Woodstock was not the first music festival of the Summer of Love era, it’s the one that dominates the collective memories of an entire generation, many of whom claim to have wallowed in the mud with the 500,000 souls who actually slogged their way to Yasgur’s farm to hear some of the leading rock, folk, soul, and blues acts of the day. Hendrix electrified with his searing “Star Spangled Banner,” Richie Havens strummed fervently for “Freedom,” Canned Heat celebrated the simple pleasure of “Going Up the Country,” while Country Joe and his Fish echoed the nation’s angst with their sardonic “Fixin’ to Die Rag” (“And it’s one, two, three, what are we fighting for?) All this and more was immortalized in an Oscar® winning documentary that cemented Woodstock as the defining music festival for generations of concert goers.

An attempt to rekindle the magic with a 25th Anniversary festival didn’t (and couldn’t) live up to the legend of the original Woodstock. But don’t think for a moment that the multi-day communal music festival is like peace signs, VW buses, fringed jackets, and bell bottoms, a relic of the past. Thanks to bands with nomadic tribal fan bases like the Grateful Dead and Phish, and thanks especially to entrepreneurs with bold visions and bolder marketing machines, the modern music festival is alive and well. This phenomenon has transformed the music business into a seemingly unending string of multi-day festivals from April through October.

And no festival defines and exemplifies the modern concert soundscape more than The Coachella Music and Arts Festival, better known by the single name Coachella. Since 1993, when Pearl Jam headlined, Coachella’s been held each Spring in California’s Coachella Valley. Like its Tennessee doppelganger, the (unaffiliated) Bonaroo, Coachella attracts hundreds of thousands of concert goers who feast on a smorgasbord of mega-stars, genre-leading acts, and rising artists presented virtually round the clock on multiple stages. Headliners besides Pearl Jam have included Radiohead, Beyonce, Lady Gaga, Guns N’ Roses, AC/DC, Madonna, Paul McCartney, and Prince, just to name a few.

With over 25 years of success, millions of attendees, scores of millions in revenues, and massive amounts of media coverage, you’d be forgiven if you’d think that the Coachella name had achieved a level of renown that would scare away copycats. But just as Watergate spawned a succession of follow-on “gates,”( like “Deflategate,” the New England Patriot’s most recent “are they cheaters?” kerfuffle), Coachella has inspired imitators who’ve tried to tack “chella” onto their names.

But today’s concert industry is big business involving big brands like Coachella. And to vigilant brand owners, imitation is not the sincerest form of flattery. So, when it learned that a Coachella Valley-based film-festival planned to call itself Filmchella, Coachella made it face the music; it sued for trademark infringement, arguing that the overlapping audiences for music and film would assume that the two “chellas” are related.

At first, the judge sided with Coachella and temporarily stopped Filmchella before the first projector began showing the first reel. That ruling—a preliminary injunction—was just the opening act. It didn’t actually decide the infringement issue, and so litigation ensued. Emboldened by its early success, Coachella asked the court to decide the case on summary judgment—arguing that the facts were so clear cut that the case could be decided without a trial.

This time, the judge modified his tune, concluding that while Coachella undeniably is well-known, a reasonable jury might find the “chella” portion weaker than the mark as a whole. The court also questioned whether a high budget music festival with celebrity performers is similar enough to an indy film-festival like Filmchella to confuse festival aficionados. Finally, the judge noted that although Coachella and Filmchella share the “chella” suffix, the two marks “have some differences, such as different font style and different beginning.” “In short,” the judge concluded in the coda of his opinion, “a reasonable jury could find that there is or that there is not likelihood of confusion from the totality of facts [and, therefore,] the jury is entitled to weigh these facts to determine whether a reasonably prudent consumer is likely to be confused.” Coachella Music Festival, LLC v. Simms, (U.S. District Court Judge R. Gary Klausner, Central District of Cal., Sept. 18. 2018). So, for Coachella and Filmchella, the litigation beat goes on and a courtroom showdown looms.

Nearly 50 years ago, Woodstock was billed as “3 Days of Peace and Music.” From today’s vantage point, with the music industry dominated by streaming services and mega-concerts, that slogan seems like a hippie dream. But then, again, the aftermath of Woodstock was mired in nearly as much litigation as the crowd at Max Yasgur’s farm was mired in mud during the rain-drenched second day. So, the founders of Coachella are carrying on the tradition of Woodstock in more ways than one. Cue the Woodstock film soundtrack: “It’s been a long time coming. Gonna be a long time gone.”

Quote of the Day: “I always think that when something is currently very trendy, it’s already very old.” Ennio Morricone, film score composer, The Good, The Bad, and the Ugly, Once Upon a Time in the West, and many others.

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March 1, 2018 · 7:22 pm

Profiles In Trademarks: For One Slogan, There’s More To The Picture Than Meets The Eye

“All the sailors with their sea-sick mamas, hear the sirens on the shore.” “For The Turnstiles,” music and lyrics by Neil Young

Many songs are laden with “hooks,” musical barbs that implant themselves indelibly in the cultural consciousness, like Eric Clapton’s searing guitar riff in “Layla.” But how many hooks are tied to a trademark?

I can think of one. Neil Young’s “Hey, Hey, My, My (“Into the Black”), Neil’s masterpiece from the late ‘70s, complete with crushing guitar chords, a raw and piercing solo on Neil’s feedback-laden “Old Black” Gibson Les Paul, and the defiant refrain “Rock and Roll will never die.” Summing it all up—so much so that it became the album’s title—is the song’s urgent justification for why “It’s better to burn out than to fade away”—“Rust Never Sleeps.”

Now, Neil Young’s lyrics, both before and after “Rust,” typically display a poet’s cryptic lyricism. Whether “searching for a heart of gold,” or “lying in a burned out basement with the full moon in [his] eyes,” Neil Young has always been a “dreamer of pictures.” So it may come as a surprise that “Rust Never Sleeps,” one of his most iconic metaphors, came not from his febrile imagination (legend has it that he wrote “Down By The River” and “Cowgirl In The Sand” in one flu-ish afternoon), but from the world of advertising.

That’s right, the iconoclastic Mr. Young— who’s mocked fellow songsters for selling their artistic souls to the devilish Mad Men (listen to “This Note’s For You” to hear his disdain for the likes of Dylan and even The Beatles who’ve rented their hits for TV ads)—this champion of creative purity, actually adopted one of his most iconic images from an unlikely corporate source—“Rust-Oleum,” the protective paints and coatings maker “whose  long-time slogan was, you guessed it, “Rust Never Sleeps”— three words that succinctly and convincingly conveyed the inexorable fate of any piece of metal whose owner was careless or neglectful enough to leave unprotected.

As products go, Rust-Oleum has a back story worthy of a Neil Young shanty (for a taste of Neil’s nautical bent, listen to “Captain Kennedy,” his mournful anti-war lament.) According to company lore, Rust-Oleum’s founder, sea-captain Robert Fergusson, “looking for ways to keep his ship in shape, “noticed that an accidental splash of fish oil had stopped the relentless spread of corrosion on his rusty metal deck, he immediately recognized it for what it was: A valuable solution.” https://www.rustoleum.com/about-rust-oleum/our-history

Although they worked in different genres and achieved different results, both Cap’n Ferguson and Neil Young experienced epiphanies—sparks of inspiration—that yielded something enduring, be it the protective properties of Ferguson’s oleaginous paint, or the ragged glory of Young’s song, which remains a staple of his concert set lists.

Today, with the advent of social media, snap chat, and e-commerce, some experts fear that taglines and slogans have begun to fade away from the advertising landscape. While many slogans retain their cache—sometimes over decades (think “Good to the Last Drop” and “You’re in good hands with Allstate”)—some observers believe taglines have become less relevant when so many other brand-messaging options exist. http://deniseleeyohn.com/taglines-are-deadlong-live-taglines/

Neil Young’s song, with its borrowed hook providing a furious crescendo that rails against atrophy and irrelevance, ensures that the one-time slogan “Rust Never Sleeps” will neither burn out nor fade away.

Quote of the Day: ” I’m climbin’ this ladder, My head’s in the clouds, I hope that it matters.” Borrowed Tune, Neil Young.

 

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March 30, 2017 · 3:16 pm

Trial of the Century: Trademark Style

“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:

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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:

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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

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June 10, 2016 · 5:04 pm

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

free sampleDigital 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.

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January 22, 2015 · 10:58 pm

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:

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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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January 5, 2015 · 2:27 pm

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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January 2, 2015 · 3:10 pm

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

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August 25, 2014 · 3:24 pm

To Thy Selfie Be True: One Small Click For A Monkey, One Giant Leap For Copyright?

“You got yourself framed on the wall. And people come by and they look at your face. And they say it’s the fairest of all,” Your Picture by Camera Obscura

Monkeys, apes, and chimpanzees have had a long history in front of the camera on the silver screen and television. What would Tarzan have been without Cheeta? Reagan without Bonzo? Clint without Clyde? Charlton without his planet of them? And when it comes to TV, who can forget Peggy Cass, Jack Weston and their trio of adopted chimps on the 1961-62 series “The Hathaways?” Well, almost everyone. (Even I had a hard time remembering the premise of that show, which aired when I was 5. But it goes to show you–casting a non-human hominid in even a mediocre sitcom leaves a lasting impression.)

But a monkey behind the camera? Calling the shots, so to speak? Hard to imagine, despite the “infinite monkey theorem that posits “Give a thousand monkeys typewriters and infinite time and they will almost surely type Shakespeare’s plays.” But it’s actually happened, and it’s caused a copyright tussle that could be dubbed “Rumble in The Jungle II.”

Here’s the story: British wildlife photographer David Slater set off for a jungle shoot in Indonesia with thousands of dollars of equipment in tow. After setting up his gear, Slater walked away from his tripodded camera. As if on cue, a crested black macaque entered stage left and began snapping away. As described by Jay Caspian Kang in The New Yorker, “the result was hundreds of macaque selfies.” Most of the haphazard snaps were blurred. But the infinite monkey theorem prevailed, and one particularly affecting image–a headshot of a macaque sporting a goofy grin–went viral, to the delight of millions of viewers around the world looking for a respite from the grim news cycle and the fiasco of Bruce Jenner’s new hairstyle (which one pundit likened to Donald Trump’s morning pre-comb over mane.)

Everyone had a good laugh at the notion of a monkey selfie and the strangely compelling image it produced. Everyone, that is, except Slater.

He demanded that Wikimedia, which had posted to chimparrazzi’s handiwork, take down the offending snapshot, arguing that he, not, the monkey, owned the copyright. To Slater, a monkey pressing the shutter on cameras Slater lugged into the jungle is no different from an assistant pressing the button after Slater set everything up. But here, Slater had not held the camera or even composed the shot. The intermeddling monkey did.

Still, Slater has reason to be miffed. His plane ticket set him back a small fortune, not to mention the cost of his gear. Without his presence, the macaque would have been foraging for berries, not aping Richard Avedon. Yet as the images produced from his camera sweep the planet, Slater hasn’t earned a dime. In fact, this episode is costing him in legal fees to vindicate his position.

There’s one big problem for Slater, however. The U.S. copyright office backs the monkey! In a recent draft policy statement, the U.S. Copyright Office has clarified that it will not register works produced by plants, animals or “divine or supernatural beings.” Specifically tackling the flap between Slater and his meddlesome sidekick, the Copyright Office noted that it will refuse to register a claim if a human being did not create the work, and listed “a photograph taken by a monkey” and “a mural painted by an elephant” as examples of works that will not receive registration. And that policy jibes with the basic copyright principle that “she who presses the shutter owns the copyright.”

So it seems that, as so often has been captured on film for the movies and tv, a monkey and his hijinks have gotten the best of yet another homo sapien sap, once again proving the wisdom behind W.C. Field’s second most famous line “never work with children or animals.”

QUOTE OF THE DAY: “In the long history of humankind (and animal kind, too) those who learned to collaborate and improvise most effectively have prevailed.”
Charles Darwin

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July 10, 2013 · 3:48 pm

Annals of Trademarks: Super 8 Superates?

“Don’t Want to Die in a Super Eight.” “Super 8” by Jason Isbell

Like me, you’ve probably driven by hundreds of Super 8 motels in your lifetime. Travelling up I-95 for hours on rides to Jersey and New York or on longer hauls southward to the Carolinas, Georgia, and down the endless Florida coast, the rectangular sign with big red 8, black “Super,” and bright yellow background is hard to ignore, even as it blends in with the melange of fast food oases and other budget-conscious lodges that dot the interchanges and byways of our endless ribbons of highway.

Full disclosure–I’ve never stayed at a Super 8 Motel. Never given the place much thought, really. Not because I’m some kind of snob when it comes to accommodations. Sure, I enjoy a swanky room at a Ritz Carlton or Monaco hotel. But I’m equally at home at a Motel 6, where Tom Bodett leaves the light on for us, or at a Holiday Inn, my parent’s motel of choice for our occasional family junkets. I’ve even stayed at a few La Quinta’s, which one of my musician friends, (who’s seen the inside of many a motel), insists means “next to Denny’s.” Somehow, however, my travelling stars and terrestrial GPS never aligned to guide me into the parking lot of a Super 8.

But last night, while drifting off to sleep with Jason Isbell’s evocative new song “Super 8” from his magnificent album “Southeastern” (buy it!), something about the name of this hotel hit me like an epiphany. I’d always assumed that Super 8 referred to the price of renting a modest room at one of the chain’s humble properties. And indeed, Wikipedia reports that the fare at the first Super 8, in Aberdeen, South Dakota, was $8.88 per night. With that price, and with its reputation for clean, no-frills convenience, it’s no surprise that Super 8 took off like a Chevy stock Super Eight zooming down the roads of Jersey, as in Bruce Springsteen’s “Lost In The Flood” from “Greetings From Asbury Park.” I had no idea, however, that Super 8, which now is owned by Wyndham Hotels, is the world’s largest motel chain. And while listening to Mr. Isbell lament that he “don’t want to die in a Super 8,” I suddenly realized why the name makes sense. Super 8, you see, is a play on the word “superate,” a verb that means “to outdo; to surpass; to exceed.” And with more than 2,000 properties and over 125,000 rooms in the US and Canada, there’s no denying that Super 8 Motels, (now known as Super 8 Worldwide) truly has done precisely as its name suggests.

QUOTE OF THE DAY: “I know bad things happen. Bad things happen. But you can still live. You can still live.” Line from the movie “Super 8,” spoken by character Joe Lamb, played by actor Joel Courteney.

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May 22, 2013 · 4:31 pm

The End: Death of a Door Likely Prevents Future Jams

“You and I travel  to the beat of a different drum.”  Different Drum, by Michael Nesmith

In a week dominated by devastation in the Nation’s tornado alley, it was easy to miss the news that Ray Manzarek, keyboardist for the Doors, had died.  While Jim Morrison defined the Doors’ image with his flamboyant stage presence and apocalyptic lyrics, Manzarek defined the band’s sound, lending baroque classical flourishes to the definitive Doors song Light My Fire and propulsive jazz inflected stylings to many other of the band’s hits. 

While Manzarek is best remembered for his music, his obituary also contains a Softrights-worthy footnote about a long simmering, and sometimes roiling,  trademark dispute over rights in the Doors name,  As reported in Billboard back in 2008, the four members of the Doors, Morrison, Manzarek, guitarist Robby Krieger, and drummer John Densmore, signed a pact in 1970 that gave each of them veto power over any business deal.  According to Billboard, the four Doors inked that agreement after a nasty battle about whether to let Buick use “Light My Fire” in a television commercial,

After Jim Morrison died in 1974, the remaining Doors remained largely, well, dormant.  But in 2002, Manzarek and Krieger itched to return to the stage. They tried coaxing Densmore to reunite the band.  Densmore declined. And though he took no issue with Ray and Robby performing the band’s music, using the Doors name was another story.  “You can’t call yourselves the Doors because you can’t have the Doors without Jim Morrison,” Densmore’s lawyer was quoted as saying.  And when lawyers are quoted, that means only one thing–a lawsuit.

Yes, despite Densmore’s protest, Manzarek and Krieger hit the road calling themselves the Doors of the 21st Century.  The tour reportedly earned them $3.2 million, none of which they shared with Densmore or Morrison’s estate.  So Densmore and Morrison’s representative sued and won, blocking further use of the Doors name and getting over $5 million in damages and costs. 

Manzarek and Krieger continued to perform together, calling themselves Riders On The Storm, and later, Manzarek and Krieger, with Densmore continuing to be the lone holdout to any commercial use of the Doors name or music (he reportedly vetoed a $15 million deal to use “Light My Fire” in a Cadillac commercial).  Shortly before Manzarek’s death, however, Densmore hinted publicly that the three surviving members might at last reunite.  But with the drummer finally singing a different tune, fate, not a court, has intervened to shut the Doors.

QUOTE OF THE DAY:  “There are things known and things unknown and in between are the doors.”  Jim Morrison

 

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