Malloy and Malloy successfully obtains judgment against Sears, Kmart, and other defendants on behalf of client Merit Diamond in copyright and trade dress infringement caseWritten by Malloy & Malloy
Firm Attorneys Peter Matos, Meredith Mendez and Jonathan Woodard were successful in enforcing the valuable intellectual property rights of well-known jeweler Merit Diamond Corporation related to its highly successful Sirena® Collection in federal court in Miami, Florida. Merit sued Defendants, Sears, Roebuck & Co., Sears Holdings Management Corporation, Sears Brands, LLC, Kmart Operations LLC, Kmart Corporation, iStar Jewelry LLC, Yelnats, Inc., and Stanley Creations, Inc. for copyright and trade dress infringement due to their sale and manufacture of infringing jewelry. The Court entered a Judgment upon consent in favor of Merit requiring the Defendants to pay Merit Diamond the amount of $90,000 and permanently cease all manufacture, distribution, and sale of the infringing products. http://bit.ly/2qT9pwg
The 11th Circuit Reaffirms its Position that a Copyright Registration is a Precondition to Filing an Infringement ActionWritten by Meredith Frank Mendez
The 11th Circuit in Fourth Estate Public Benefit v. Wall-Street.com, LLC, No. 16-13726 (11th Cir. 2017) has reaffirmed its position that a copyright owner cannot file a copyright infringement lawsuit unless the Register of Copyrights registers the copyright in the works at issue.
Although registration is not required to own a copyright, it is required for a copyright owner to enforce its rights in court in a copyright infringement action. The Copyright Act provides that “registration” of a copyright is a precondition to filing suit for copyright infringement. 17 U.S.C. § 411(a).
In Fourth Estate, the plaintiff filed an application to register its works, although the Register of Copyrights did not register the works. The Court held that “registration” occurs when the Register of Copyrights registers the copyright and not merely when an owner files an application to register the copyright. Therefore, the Court affirmed the district court’s dismissal of the plaintiff’s complaint on the basis that it failed to plead compliance with the registration requirement of 17 U.S.C. § 411(a).
This decision represents a split in authority among the circuits as some circuits such as the Ninth and Fifth Circuits follow the “application approach”, which requires a copyright owner to file the deposit, application, and fee required for registration before filing a suit for infringement.
The U.S. Supreme Court ruled in Star Athletica v. Varsity Brands, that decorative elements of a cheerleading uniform are protectable by copyright law, a ruling the Court said was aimed at resolving "widespread disagreement" on when such designs are eligible for protection. The decision bolsters the legal protections for pictures, sculptures and graphic designs. The case examined the limits of copyright protection for clothing, furniture and other useful items that can have both functional and distinctive ornamental aspects. The Court reasoned that the cheerleader uniform design met the test of being able to "exist as its own pictorial, graphic, or sculptural work" and that it was eligible for copyright protection when it was separated from the utilitarian article. The ruling could have expansive implications for designers in the fashion industry, who seek to protect ornamental designs that are affixed on useful articles like clothing.
Paul McCartney recently filed suit in United States District Court, to reclaim ownership rights of some of the Beatles' most famous early songs. The suit seeks a declaratory judgment that Mr. McCartney is entitled to reclaim copyright interest in several early songs under the termination provisions of the Copyright Act. Under this provision of the Copyright Act, authors who assigned their copyright interests to artistic works before a 1978 revision of the law, are allowed to reclaim the rights after 56 years have passed. Mr. McCartney has been serving advance notice of his intent to reclaim the rights as required by law.
Unlike most countries, the United States copyright law provides musicians and songwriters an opportunity to regain ownership of works that they transferred to outside entities, such as record labels and music publishers after a certain period of time. For many musicians, especially those who had hits decades ago, copyright termination has become a powerful way to regain the rights in their works and to gain financial leverage with their record companies and music publishers.
Michael Jackson purchased the rights to various Beatles songs in 1985 and later formed Sony/ATV as a joint venture with Sony. Last year, Sony bought out the share of Mr. Jackson's estate for $750 million.
One potential issue in the case is a recent ruling by a British court that found the band Duran Duran could not reclaim rights to its songs because the band's original publishing agreements were subject to English law. Mr. McCartney's suit notes, he and John Lennon signed a series of publishing contracts in Britain beginning in 1962, assigning his ownership rights to some of the popular early Beatles songs. As such, Sony/ATV have begun to suggest that the copyright rule may not apply to Mr. McCartney's songs.
The Copyright Office has issued final rules updating its practices for receiving the designation of agents under the Digital Millenium Copyright Act ("DMCA"). Until now it was paper based, but after December 1, 2016, the Copyright Office will switch to an electronic system. If you have previously appointed such an agent to receive notices of claimed infringement in order to take advantage of the Safe Harbor provisions for internet service providers, you must file a new designation before December 31, 2017 in order to ensure that your agent is listed in the new electronic directory.
Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)
These pictures are worth more than just 1,000 words. In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International. The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography. The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.
Over 200 artists, including Hans Zimmer, Jennifer Hudson and members of Weezer, Linkin Park and Earth, Wind & Fire, filed an amicus brief with the 9th Circuit Court of Appeals in support of the bid by Pharrell Williams and Robin Thicke, to overturn the $5.3 million final judgment.
The amicus brief includes concerns over how some artists believe that the 9th Circuit Court's ruling, may have a chilling effect on artist's creativity going forward. The brief states that the case is "unique" because the two works in question "do not have similar melodies" and "do not even share a single melodic phrase," but rather a similar overall "feel" or "groove."
Separately, 10 musicologists have filed their own amicus brief, echoing that the verdict could curtail creativity in popular music, but focusing more on the 9th Circuit's decision to not reject the case early on in the summary judgment phase.
ASCAP (American Society of Composers, Authors, and Publishers) and BMI (Broadcast Music Incorporated) suffered a blow, when the U.S. Department of Justice ("DOJ") decided not to accept proposed changes to music licensing antitrust agreements which have been in place since 1941. These licensing agreements bind these two music performance rights organizations and shape the landscape of music licensing.
ASCAP and BMI contends that the 75-year old rules in place, disadvantage songwriters and composers in the era of digital music and on-line streaming. Instead, the DOJ asserts that the in place "full-work" licensing, licenses that give radio, television stations, bars, restaurants and online music services the right to play music for which ASCAP or BMI hold the rights to, are the proper mechanism. The DOJ opined that the requested modifications would "disrupt the status quo." Under the current types of licenses, if a song has multiple writers, any of them could grant ASCAP or BMI the right to fully license the song. The DOJ believes the current full-work licensing and fractional payments practice is the most beneficial to both the writers and those who want to play their music.
ASCAP and BMI have opposed the recent DOJ interpretations of the licensing rules, saying it could limit the freedom of authors to decide how they wish to be paid for their work and through which organization. BMI has stated that it plans to file a lawsuit in Federal Court against the DOJ, while ASCAP announced it will work on new legislation in Congress.
The legendary English rock band Led Zeppelin won a high-profile copyright infringement case on Thursday, after a California federal jury rejected claims that the opening to their famed megahit "Stairway to Heaven" was stolen from a song by the band Spirit.
The jury found that there was a reasonable chance that Jimmy Page or Robert Plant of Led Zeppelin had heard the song "Taurus" by Spirit, before they wrote "Stairway to Heaven" and could have copied it, but decided that the two songs were not "extrinsically similar." The jury was instructed that while the two songs might share similarities like chord progression, common musical elements such as chord progressions are ineligible for copyright protection.
Attorneys for the Plaintiff contended that evidence showed that the similarities between the two songs went beyond simple chord progression, and that Randy Wolfe of Spirit, deserved writing credit on the megahit and some of the millions of dollars the song had earned in the previous years.
The jury disagreed, finding that the original parts of "Taurus" were not similar to "Stairway to Heaven" and awarded the Plaintiff no amount of damages. Attorneys for the Plaintiff indicated that an appeal may be forthcoming.
As many fans remember the legendary artist Prince, they will discover that the task of finding his extensive musical catalog online is nearly impossible. In today's digital age dominated by music streaming services, many will be surprised to find a total lack of Prince's music on many of the top streaming services such as Spotify, Rhapsody and Apple Music.
In the 1990's Prince was involved in several legal disputes. It is well documented that he changed his name to an unpronounceable symbol in the 1990's during a contractual battle with his record label Warner Bros. After fulfilling his contract, reclaiming his name, and striking a landmark deal in 2014 to reclaim control over his back catalog, Prince intensified his attacks on those he felt were infringing on his music copyrights. In recent years, he had been involved in legal disputes with Facebook and YouTube users providing links to 'bootleg versions' of his music and he had refused to release his music on several of the biggest streaming services, because he claimed those services took advantage of the artists.
Prince's catalog can only be found online on a small number of platforms like Pandora and SiriusXM, which rely on compulsory licenses to perform music. The question now, is whether his music will see a wider release in the wake of his untimely death. Soon, the prolific artist's catalog could become more widely available on streaming services. The decision to release Prince's music more widely online, will depend on whoever is in charge of the administration of his estate and whether Prince had any provisions in his will regarding how his intellectual property may be used in the future. At this time this remains unknown.