The Law Offices of Gordon P. Firemark » Entertainment Law

Legislation presented by U.S. Senate Banking Committee chairman, Chris Dodd is working its way through the legislative process. The proposed “Restoring American Financial Stability Act of 2009” could make it significantly harder for film producers to utilize some of the most common investor-financing models to fund the budgets of their films.

The bill is viewed by some as a way to sabotage the American creative dream machine by slipping in a little poison” and “the death knell of American leadership in the world.”

Specifically, three provisions are of significant concern to those who rely on so-called “angel” capital. These provisions would:

increase the financial thresholds for qualification as “accredited investors,” who are, generally speaking, wealthy investors whose investments are not subject to significant federal securities regulation;
allow the Securities and Exchange Commission (“SEC”) to make certain angel financing transactions subject to state regulation (previously, all so-called “Rule 506 offerings,” which were commonly used for angel financings, were preempted from state regulation); and
require that those “Rule 506 offerings” that remain preempted from state regulation nonetheless be subject to a 120 day review process with the federal SEC.

Word on Capitol Hill is that the bill will undergo significant changes, but now is the time to contact your Senators and Representatives to voice your opposition to the above provisions.

Currently, an investor qualifies as “accredited if he or she has a net worth of $1 Million or more, or has an annual income over $200,000 ($300,000 for married couples). Under Rule 506, sales of securities to such investors are largely unregulated. This new bill would change that dramatically, increasing these limits, thus making it harder than ever to find qualified investors for high-risk investments like films, theatre projects or start-up ventures.

Source: Proposed financial regulatory reform bill will adjust accredited investor thresholds (WTN News).

Hat tip to my colleague Peter Levitan for bringing this to my attention.

Entertainment Law Update Podcast, Episode 10

Gordon Firemark — Thu, 01 Apr 2010 07:43:02 +0000

Replicas, trademark, copyright, etc.

Star Wars: the Court of Appeal strikes back – International Law Office

Stormtrooper Replicas: Final Strike By British Court of Appeal

Stormtroopers In The Courtroom — earlier post by Tamera:

http://ipandentertainmentlaw.wordpress.com/2008/04/08/storm-troopers-in-the-courtroom/

LucasFilms won a $20 million judgement in a U.S. court in 2006 against British prop designer, Andrew Ainsworth, for copyright and trademark infringement of the Star Wars’ “Storm Trooper” design.
Andrew Ainsworth, sculpted the Stormtrooper helmet for the first “Star Wars” movie in 1977. Ainsworth now sells replicas of the helmets and armor “casted from the original molds.”
In 2008, the case moved to the UK, where LucasFilms sought to enforce the $20 million dollar judgment. Ainsworth countersued, claiming he owns the copyright and is entitled to a portion of the $24 Billion in “Star Wars” merchandising revenue.
In January 2010, a UK court of appeal dismissed LucasFilms’ appeal on all points. The UK court found the helmets did not qualify as sculptures under British Copyright law.
Is attempting to enforce a U.S. judgement in the UK forum shopping?

Different outcome in US?

“Bob’s Big Boy” Statue gives rise to a suit against former franchisee

Big Boy Restaurants International, LLC v. Schoenbaum; filed Feb 25, 2010

http://www.courthousenews.com/2010/03/01/25116.htm

Complaint: http://www.courthousenews.com/2010/03/01/BigBoy.pdf

According to www.shoneys.com: “1959: Entrepreneur Raymond L. Danner becomes the first Shoney’s Big Boy franchisee for Tennessee…” “1969: Shoney’s Big Boy doubles in size every four years…” “1982: Shoney’s ends its licensing relationship with Big Boy (now owned by Marriott) to allow for greater expansion.”

Emily Schoenbaum, the daughter of the Shoney’s Restaurants founder, allegedly has built and displayed a 12-foot “Big Boy” statue.
Schoenbaum designed this Big Boy and intended it as a historical monument (according to the slideshow) because it marks the spot where in 1947 Alex Schoenbaum opened The Parkette drive-in. She refused to take the Big Boy down calling it “a piece of art, it’s a cultural icon.”
The location was a Big Boy franchise for 30 years, but that agreement has expired or was terminated in 1982. Big Boys claims trademark infringement, copyright infringement and unfair trade.
- Big Boy says
  - Schoenbaum “distributed hamburgers and drinks to the public at the statue [and] publicized that they were ‘Big Boy’ hamburgers,” though they actually are Shoney’s burgers.”
  - Shoney’s uses the Big Boy trademark on its Web site to ask the public to donate memorabilia from the early Shoney’s.
- Big Boys seeks damages for trademark infringement, copyright infringement and unfair trade. And it wants her to take down the Big Boy.
- We object to the fact that it’s our trademark being use in an unauthorized way…and such a way that causes confusion,” Bourdoin told Portfolio.com. “It’s visible from the highway, and apparently people have been pulling off the highway thinking they were going to find a big boy restaurant. It’s as though they put the golden arches on top of that pole. I’m not sure that McDonald’s would be too keen on that.”
Other info
- Shoney’s website doesn’t mention Big Boy, written or visual: http://shoneys.com
  - The website timeline says
    - that the licensing relationship with Big Boy ended in 1982.
    - the Shoney Bear became the brand mascot in 1985.
- “Shoney’s (Tennessee, Alabama, Mississippi, Louisiana, Georgia, Florida, Virginia, South Carolina, North Carolina, West Virginia, Ohio, Missouri, Maryland), founded by and named after Alex Schoenbaum, no longer displays the Big Boy Statue, because it dropped its relationship with Big Boy in 1984 [conflicts with Shoney's website] in order to expand to other states where others owned the trademark. It was the second Big Boy franchisee and subfranchised to Elby’s and Lendy’s.” http://en.wikipedia.org/wiki/Big_Boy_(restaurant)
- Bob’s Big Boy: http://www.bobs.net/
- 1984 – Shoney’s licensing agreement terminated under a buy-out agreement: http://findarticles.com/p/articles/mi_m3190/is_v18/ai_3260566/
- “Adventures of Shoney’s Big Boy” comic book – 76 issues from 1976-1980
- Problems started when Ms. Schoenbaum planned a memorial event with the Big Boy as the main attraction: http://www.allbusiness.com/government/government-bodies-offices-heads-state/13138388-1.html
  - The original slideshow: http://media.cnpapers.com/shoneys/
http://www.portfolio.com/views/blogs/daily-brief/2009/10/02/shoneys-founders-daughter-michigan-restaurant-chain-battle-over-big-boy-monument/

FILM

AVATAR didn’t sweep the Academy Awards, but it’s a big winner at the box office. BUT, the plaintiffs are lining up to sue over idea theft/copyright infringement.

The Complete List Of Sources Avatar’s Accused Of Ripping Off – Avatar – io9

Vancouver man files first ‘Avatar’ rip-off lawsuit–The Hollywood Reporter | Esq. | Entertainment and Media Law

http://thresq.hollywoodreporter.com/2010/03/the-first-avatar-ripoff-lawsuit.html

‘Avatar’ Plagiarism Suit Dismissed in China

What is protectable?
- themes? (Dances With Wolves, Pocahontas)
- plot? (Terra Incognita)
  - Fox has given us this statement on the lawsuit: “James Cameron wrote the story for ‘Avatar’ two years before Mr. Malak claims he wrote his work, and therefore ‘Avatar’ cannot be based on ‘Terra Incognita.’ We are confident that the lawsuit will be decided in our favor.”
- legends?
- specific images? (Timespirits)
- bits and pieces of ideas in other films?
Probably a no go on all of these – idea/expression dichotomy, originality requirement, etc.

Also, issues of common origin, idea v. expression, etc.

Scenes a faire: In copyright law, a principle in whicih certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre. Where there;s a limited range of expression possible, those limited forms will not be protected.

Idea/Expression dichotomy: Ideas and concepts are not protected by copyright law.

At root, isn’t this: “Man assimilates with foreign culture, falls in love, and joins with his new “family” to fight against his native culture in an epic battle of good vs. evil”

What about Hurt Locker Lawsuit?
Sarver v. The Hurt Locker, LLC, complaint filed 3/2/2010 in New Jersey District Court – Complaint

http://www.examiner.com/x-18039-Capital-District-Movies-Examiner~y2010m3d9-Avatar-and-The-Hurt-Locker-both-attract-ripoff-lawsuits

Staff Sergeant Jeffrey S. Sarver has filed suit in New Jersey against “The Hurt Locker, LLC” claiming that the film exploits his personal life story.
- “The Hurt Locker” grew out of an article Mark Boal wrote for “Playboy”after having been embedded with the military. The Department of Defense required Boal not to report personal information except for the name and hometown of a service member if he or she consented.
Does this give Sergeant Sarver a stake in the film?

Film is based on article(s) from Playboy journalist embedded with military.

Do soldiers give up rights of privacy/publicity when fighting for our country? If ordered to allow a journalist to accompany them, is their consent (whether implied or express) given freely? Is there a release?
Are they public figures?
Can producers of the film defend on the basis that the characters in the film are composites of many soliders?
It will be interesting to read the answer (which hasn’t yet been filed) and learn about some of the defense positions in the ca.

Speaking of common origin, ideas, etc:
Denizen, LLC v. Mindshare Entertainment, LLC.

Complaint here: http://www.courthousenews.com/2009/10/28/Mindshare.pdf
Ad agency claims it invented TV product integration–The Hollywood Reporter | Esq. | Entertainment and Media Law
Denizen is suing Mindshare for stealing an idea to ensure viewers pay attention to advertisements.
- Does stealing an idea (trade secret misappropriation) = patent infringement? No.
- Prior art search done on program integrated commercials? Probably not because this isn’t a new idea. So, if not new, was the information conveyed “confidential” at all? Most NDAs include language excluding information that’s already publicly available.)

Kareem Abdul-Jabbar sues producer for botching documentary–The Hollywood Reporter | Esq. | Entertainment and Media Law
Union/OSG LLC v. William P Zagger et al
Removed from the Superior Court of CA, Los Angeles County, to US District Court, Central District of California on March 1, 2010. http://www.courthousenews.com/2010/02/01/24239.htm

Kareem Abdul-Jabbar is suing the film production company he hired to create a 90-minute film based on his book “On the Shoulders of Giants: My Journey Through the Harlem Renaissance” in time to be considered for Sundance Film Festival for $1 million.
- When an untimely rough cut was handed over, “the producers also allegedly had failed to obtain legal clearances for use of the materials” such as music clips and photographs.
- Because the film wasn’t finished, it can’t be distributed or shown at the NBA Hall of Fame or All-Star events.

From ABBA to ZZ Top, All the Good Bands Names Are – WSJ.com

John Paul Jones, Led Zeppelin bassist, formed a new band, but had a hard time coming up with a name, eventually settling on Them Crooked Vultures.
- “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”
- Establishing an identity for a band works differently in the digital age:
  - Almost no time required to create a profile online and upload music
  - Downloads may create jurisdiction
  - More comprehensive name searches can be done online
  - Using common words requires coexistence?

Triumph v. Sony

The IPKat – happy to serve the IP communities: Friday frivolity: Beyonce’s pirated bikini

Beyoncé’s booty was allegedly covered in copyright infringing panties originally designed by Bulgarian designer Iskren Lozano in the music video “Video Phone.”
- 50 seconds into the music video, Beyonce struts her stuff in the outfit in question.
- “This week, the 7th Civil Chamber of the Landgericht Munich upheld an ex parte injunction barring Sony from distributing the “Video Phone” clip in Germany.”

First Amendment and the Press

Stewart v. Rolling Stone LLC: Complaint, Decision

http://scholar.google.com/scholar_case?case=10488818972083635401&q=stewart+v+rolling+stone&hl=en&as_sdt=2004.

Rolling Stone wins appeals court ruling on press freedom–The Hollywood Reporter | Esq. | Entertainment and Media Law

California’s First District Court of Appeals reversed the lower court, holding “that the First Amendment gives publications wide latitude to publish feature spreads next to advertisements that may be distasteful to those being profiled.”
- 186 indie musicians were spotlighted with a Camel cigarettes ad spread, so they sued for “unauthorized use of artist names for commercial advantage.”
- The District Court concluded that the indie promotion was “inextricably entwined” with the Camel ad, which would put a lot of content in danger of being categorized as commercial speech warranting less First Amendment protection.
- Rolling Stone was not “engaged in the production, distribution or sale of cigarettes,” but simply the medium that is used by commercial speakers to distribute commercial messages. The easily discernible beginning and end of the ad and the lack of clear and convincing evidence presented to prove actual malice and an injury were other reasons for a clear reversal.

Suit over use of “Route 66″ to name porn project

Roxbury Entertainment, Inc. v. Penthouse Media Group, Inc, et. al December 18, 2009 Judgment

AMEC/ACC Newsstand powered by Lexology – Roxbury Entm’t v. Penthouse Media Group Inc.

The Central District of California held that if a mark underlies an artistic work, “the First Amendment is a complete defense to Lanham Act claims.” Summary Judgment was granted for Penthouse.

Facts: Roxbury, owner of the mark ROUTE 66 for the 1960′s TV show, and other entertainment media, sued Penthouse for trademark dilution after they started selling DVDs of pornography as “Route 66.”
- Penthouse claimed this title was protected by the First Amendment as free speech.

Court relies heavily on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
Holding: The court used the Rogers balancing test and concluded that Penthouse’s use of “Route 66″ was protected by the First Amendment.
- The first prong of the Rogers test requires more than zero artistic relevance which Penthouse showed because part of the film’s setting was a roadside motel. This tenuous connection was enough.
- The second prong of the Rogers test requires the court to evaluate whether consumers would be misled about the source or content of the work. The court found that consumers would not be misled to think that Penthouse’s use of “Route 66″ was affiliated with with the 1960′s TV series.

This decision continues the line of entertainment cases that have developed in the last twenty years making clear that creators of artistic works should be relatively unrestricted in choosing titles for their works. So long as the creator can show some artistic relevance of the mark to his/her work, and so long as nothing about the use is explicitly misleading, the First Amendment will provide a defense to what might otherwise be an infringing trademark use.

Asked & Answered: Mechanics of copyright infringement suit.

Gordon Firemark — Fri, 26 Mar 2010 06:00:12 +0000

Q: What are the mechanics of a copyright infringement law suit? How does it all work? As an example, let us say a non-U.S. based writer believes his work has been infringed by a person or entity in the U.S. Could a non-U.S. lawyer file suit? Where would the case be heard and what would be the approximate time line? What effect could the suit have on a company set to produce the disputed work?

A: OK, this question is actually much more complex than it might seem. It raises issues covered by several different fields of law. Copyright, Constitutional, Civil Procedure, and International Law, to mention a few. So, here’s a very abbreviated summary.

First off, a work protected under another country’s copyright law will (in almost all cases) be protected by U.S. copyright law as well. The U.S. is signatory to the Berne Convention, an international copyright law treaty, and has agreed to extend protection to works created by foreign authors.

Generally, an aggreived party (Plaintiff) can file suit for copyright infringement against a U.S. based infringer (Defendant) in the Federal Court district in which the Defendant resides, or where the Defendant has certain ‘minimum contacts’. (Copyright is federal law, so the federal courts have jurisdiction).

A non-us lawyer MAY be permitted to appear in U.S. Court, but this may depend on the local rules of court. (Federal court cases can be very tricky, though, so it’s probably best to have a U.S. lawyer handle things, with the non-us lawyer sitting in the second chair.)

Filing a lawsuit involves preparation of a document called the “complaint” which details the particulars about the parties, and the facts giving rise to the claim(s). The complaint is then SERVED on the defendant by a process server, whereupon the defendant has a period of time (usually 20-30 days) in which to respond by filing an ‘answer’ admitting or denying the facts alleged in the complaint. Once these ‘pleadings’ are on file, the Court will hear various motions, permit the parties to engage in ‘discovery’ of one-another’s evidence, and ultimately set the matter for a trial. Typically cases take 1-3 years to make their way from initial filing to the trial, and verdict. If any issues are presented to the appeals courts, things may take several more years.

Generally, the mere pendency of a lawsuit will not legally prevent a producer from moving forward with a film, but the financial risks may lead the producer to drop the project or place it ‘on the shelf’ pending resolution in the Courts. If appropriate, a plaintiff CAN ask the court to issue an injunction restraining the producer from proceeding, but such injunctions are rarely granted.

If you feel your work has been infringed, it’s important to act swiftly to protect your rights. Some cases may be subject to a very short window of time in which you must file your claim, so contact a lawyer immediately when you learn of a possible infringement.

This is intended as general information only and does not establish an attorney-client relationship. It is not a substitute for a private, independent consultation with an attorney selected to advise you after a full investigation of the facts and law relevant to your matter. We will not be responsible for readers’ detrimental reliance upon the information appearing in this feature.

Thinking of Producing it yourself? subscribe to my FREE e-course “6 ways to Finance A Feature Film” by visiting http://firemark.com/minicourse

Entertainment Law Update Podcast – Episode 9, Olympic trademarks, album integrity, and more.

Gordon Firemark — Thu, 25 Mar 2010 06:00:19 +0000

GET CLE CREDIT for this episode.

Quick Takes
IP and the Olympics
Sculptural works, photographs and subsequent uses
Album Integrity in the age of digital downloads

Love Music? Support Grammy Foundation & MusiCares

Show notes

Some quick takes and follow ups

Chuck Yeager not so successful in another right of publicity lawsuit

(Last month we discussed his claims against Cingular)

Yeager, et al. v. Bowlin, et al,

Decision

FACTS: Yeager and Bowlin had a deal to sell Yeager memorabilia, but after a dispute, Yeager asked that Bowlin stop using his name and likeness on website, etc. When Bowlin failed to do so, Yeager filed suit.

Court dismissed Yeager’s right of privacy claims as time barred by the statute of limitations. Plus, the single publication rule was applied to the defendants’ website.

Single Publication Rule – “[n]o person shall have more than one cause of action for damages for . . . invasion of privacy or any other tort founded upon any single publication or exhibition or utterance, such as any one issue of a newspaper or book or magazine or any one presentation to an audience or any one broadcast over radio or television or any one exhibition of a motion picture.” Cal. Civ. Code § 3425.3.

What about republishing ?(2000 Web site was re-done in 2003, but suit not filed until 2008). Court holds that revision of a Web site IS a new publication for purposes of the rule, but suit was still time-barred.

Jammie Thomas-Rasset Case:

FACTS: This is the record industry’s file-sharing suit against a woman in Minnesota who had 24 songs in her file-sharing application. There have been two trials to date, and after the second one, The court reduced the jury’s award from $1.92 million to $54,000, concluding that damages should be capped in this case at $2,250 per song, three times the minimum statutory amount. the plaintiffs have rejected the remittur, and decided proceed with yet another trial (set for this October). This one will be limited to the issue of damages. RIAA wants to to avoid the creation of a new standard for statutory damages that they claim circumvents the current statutory scheme.

Decision

Capitol Records Inc., et al. v. Thomas-Rasse t

Copyrights & Campaigns: Labels reject remittitur, opt for third trial on damages in Jammie Thomas-Rasset case

Copyrights & Campaigns: Third Jammie Thomas-Rasset trial set for Oct. 4

Athletes’ Right of Publicity claims against NCAA:

Edward O’Bannon v. NCAA & Collegiate Licensing Company, Craig Newsome v. NCAA & Collegiate Licensing Company

Class action against NCAA gets a green light

Former UCLA basketball star Ed O’Bannon’s class action suit alleges that the NCAA misused the likeness of college althetes in video games and other licensed materials. The District Court denied a motion to dismiss in a class action suit against the NCAA. The discovery process may reveal the “inner workings of the NCAA.”

February 8, 2010 Order here:

http://i.usatoday.net/sports/college/2010-02-09-obannon-document.pdf?loc=interstitialskip

Redbox:

Redbox is the company that runs those $1 per night DVD rental kiosks in grocery stores and other locations. They’ve been engaged in a battle with the film distributors over access to dvd titles, etc., and there have been some allegations that the distributors have engaged in unfair practices to prevent Redbox from getting the DVDs. (even asking retailers to limit multiple-unit sales). Redbox has raised questions about antitrust, etc.

Other setbacks for Redbox come from Walmart and Target who have recently begun to enforce a DVD purchase cap on new releases, likely motivated by studios instead of consumer access.

Why New Release DVDs may vanish from Redbox Kiosks

Warner Brothers settled with Redbox and agreed to distribute DVDs 28 days after their release dates, while others like Fox and Universal have not. However, this delay in exchange for access to quantities demanded by consumers is the new trend; Netflix signed a similar deal with Warner Brothers.

Warner Settles Suit Against Redbox; Agrees to 28-day Window | Digital Media Wire

NEXUS ONE trademark — follow up from episode 8:

“Nexus One” Likelihood of Confusion With “Nexus” Says Trademark Examiner

http://ipandentertainmentlaw.wordpress.com/2010/03/16/nexus-one-likelihood-of-confusion-with-nexus-says-trademark-examiner/

Google, Inc. received an initial refusal from the USPTO for its trademark application for “Nexus One” in connection with mobile phones (Serial number 77891022).
The trademark examiner held there was a likelihood of consumer confusion between the mark “Nexus One” for mobile phones and the mark “Nexus” for a variety of telecommunication services. “NEXUS” is a registered mark of INTEGRA TELECOM HOLDINGS, INC. in Class 038 for a variety of telecommunication services.
Google will have a period of six months to prepare and submit a response to the USPTO. If Google cannot overcome the refusal, a Final Refusal will issue and Google will have six months from the issuance of a Final Refusal to file any new information and/or an Appeal.

DMCA Take Down: Universal Could Have To Pay for Having Dancing Baby Video Removed.

http://www.businessinsider.com/universal-could-have-to-pay-up-for-demanding-dancing-baby-removal-from-youtube-2010-3

Olympics

Olympics Using Bogus Copyright Claims To Take Down All Videos Of Fatal Luge Crash | Techdirt

http://legalblogwatch.typepad.com/legal_blog_watch/2010/02/lugers-death-at-olympics-leads-to-deplorable-copyright-claims.html

Does a fair use argument exist for showing the fatal Georgian luger’s crash video? The International Olympic Committee was able to invoke the DMCA to take down the video from Youtube and other websites.

U.S. copyright law was not implemented to choke off the flow of facts and news reporting. In fact, § 107 of the Copyright Act specifically limits a copyright owner’s rights in these kinds of situations. The IOC cannot use DMCA takedown notices to silence the speech it does not like. In fact, sending those notices may end up costing the IOC, unless they can successfully make the case that they considered whether use of the clips could be fair use before making their demands. – Jason Fischer

What about in other nations? “Fair Use” is a US Legal principle founded in the precepts of the 1st Amendment.. not applicable in other countries.

The IOC issued blogging guidelines for all “accredited persons” (that would include athletes) prior to the Olympics. See here for guidelines:

http://www.olympic.org/Documents/Reports/EN/en_report_1433.pdf

Olympic Athletes Can Tweet to Their Hearts’ Content | Citizen Media Law Project

Accredited persons are permitted to tweet/blog their personal expressions, but cannot connect their Olympic experience with advertising purposes, any exclusivity, or using the word “Olympic” in their website name. They may also not tweet/blog any sound/video from the games, photos of any closing/opening ceremony, medal presentation, or use the Olympic symbol. They may post photos where only they are pictured, but not involved in any of the above activities.

Colbert Report had a clever piece about the Olympics’ protection of their trademarks.

http://www.colbertnation.com/the-colbert-report-videos/264535/february-22-2010/vancouverage-2010—ed-colbert

Hillarious! NBC paid $820 million for the exclusive right to say “Olympic Coverage.” Other exclusive words were: Winter Games and Vancouver 2010, as well as displaying the Olympic rings.

“Quadrenial Cold Weather Athletic Competition”

London 2012 trademark enforcement begins.

lhttp://www.travelweekly.co.uk/Articles/2010/03/18/33285/olympic-trademark-rules-shackle-travel-agents.html

London 2012, London 2012.com, Olympic(s) or the Olympic symbol may only be used by official Olympic sponsors, the London Organizing Committee warns. Travel agents are considering ways to promote/sell travel to London without saying, “Go to London for the Olympics.”

Is this taking trademark law too far? What about “nominative” mentions of the brand? Shouldn’t it be permissible to mention the FACT that the events are occurring at a specific time and place, and then to sell travel tickets, etc., for that period of time?

The Boxing kangaroo flag.

“Boxing Kangaroo” is viewed by IOC officials as a “commercial logo” BECAUSE it’s registered as a trademark (the logo was acquired from a receiver for a now-defunct commercial enterprise). IOC threatened to penalize Australian team for flying the flag, as a violation of their rules, but after some negotiations, Australia was permitted to keep flying its boxing kangaroo flag at the Olympic Village, because the mark is now a registered trademark of the Australian Olympic Committee. Not intended as a commercial activity… just about team spirit. Australian Olympic Committee will register this flag/logo as one of their team/national identifiers… to avoid the issue in future.

http://www.theaustralian.com.au/news/sport/john-coates-persuades-jacques-rogge-to-allow-boxing-kangaroo-flag-to-fly/story-e6frg7mf-1225828056533

IOC Tells Australian Skater she cannot wear bracelet that features third-party trademark. Bracelets and similar items are considered “sponsorship” by the IOC and banned during competition.

http://www.theprovince.com/sports/2010wintergames/Aussie+skater+banned+from+wearing+bracelet+memory+dead+friend/2545711/story.html

How Far Will The USOC Reach To Enforce Olympic trademarks and copyrights?

http://seattletimes.nwsource.com/html/ronjuddsolympicsinsider/2010909904_no_tears_shed_here_over_usocs.html

http://www.jdsupra.com/post/documentViewer.aspx?fid=d32a7849-0c0b-444d-ad8f-1226913dfcff

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games has filed 173 trademark applications in Canada since 2004. Many applications were filed, but the registration process was not completed. Clearly, after each great idea by the Olympic committee, a new round of applications were filed in an attempt to reserve numerous marks. The “Inukshuk Design” mark which is the symbol most recognizable with the 2010 Winter Games. The application was filed and registered in 2005…well before the actual 2010 Winter Olympics

Sculptural works and public art

FACTS: in 1990, Frank Gaylord, an 85 year old, WWII veteran won a contest to create a Korean War Veteran’s Memorial, sponsored by the Government. A few years later, in 1995, John Alli, took hundreds of photos at the site. Then, in 2002, the US Postal Service paid Alli $1500 to license one of his photos for use as a postage stamp.
Gaylord sued, claiming The U.S. Postal Service must compensate him for an image on a 37-cent stamp issued in 2002 because he never gave permission to use the sculpture.
- The ultimate outcome of copyright infringement suit began with the lower court throwing the case out because the government was the co-owner of the work so it had the right to use the images.

Gaylord v. U.S.: http://www.cafc.uscourts.gov/opinions/09-5044.pdf

Postal Service must pay sculptor :: CHICAGO SUN-TIMES :: Nation

US Postage Stamp Found To Be Infringing On Copyright Over Statues In US Korean War Memorial

An 85-Year-Old Sculptor vs. The Government (Fed. Cir. 2/25/2010)

What about the money?

USPS initially paid $775,000 for the sculpture

In 1995, Alli took hundreds of photographs of the memorial on a snowy day and eventually produced a single, haunting photo. In 2002, the federal government paid Alli $1,500 to use his photo as the basis for a 37-cent postage stamp.

USPS brought in more than $17 million from the sale of 48 million stamps, including about $5.4 million in sales to collectors–before the agency retired it –> Gaylord sought 10% of sales as royalties

Is this fair use?

The lower court ruled that this was fair use because the stamp clearly quite transformative, different in nature, and did not harm the commercial value of the original work.

the documents expressly kept copyright rights with Gaylord

Recall also, Community for Creative Non Violence v. Reid 490 U.S. 730 (1989) (sculptural work NOT a “Work Made For Hire” because not an enumerated type of work, and sculptor not an employee).

Wikipedia: http://en.wikipedia.org/wiki/Community_for_Creative_Non-Violence_v._Reid

Opinion: http://scholar.google.com/scholar_case?case=3326238332286533012&q=reid+nonviolence&hl=en&as_sdt=2002

Photographs of Dance Steps on Broadway

Seattle photographer Mike Hipple is defending infringement action from sculptor Jack Mackie of “Dance Steps on Broadway,” a work created with public funds that exists on a public sidewalk.
- Hipple took a photograph over ten years ago of a woman dancing along those sidewalks, and some of the “dance steps” were visible in the photo –> Mackie is claiming infringement
  - Hipple’s stock photography agency removed the image –> Mackie sought statutory damages

http://hipple-ldf.blogspot.com/
http://blog.seattlepi.com/thebigblog/archives/193502.asp

What about the money?
- Mackie has received a payout from Hipple’s stock photo company’s insurance.
- Hipple has attempted to settle without success.
- Expensive lawsuit regardless of the merits: “if Mr. Mackie is correct and this isn’t fair use, then he can file a $60,000 law suit against anyone who, when strolling along Capitol Hill, thinks the dance steps are nice and takes a photo or video.” (and uses it for commercial (stock photo and art-print) purposes?)

Recall our discussion a couple of months ago about the “Bull Market” sculpture in NYC, and the “Little Mermaid” in Michigan?

MUSIC:

Pink Floyd v. EMI

Artist right to preserve integrity of album against single song sales.

http://news.yahoo.com/s/ap/20100311/ap_on_hi_te/eu_britain_pink_floyd_11

Pink Floyd challenge EMI over single track sales | Business | The First Post

Pink Floyd Suing EMI Label Over Online Royalties (Update1) – BusinessWeek

In a suit over royalty accounting and other claims, The group’s counsel told the court the veteran band’s contract ”expressly prohibited” what he referred to as ”unbundling” – selling tracks ”other than in their original configuration”.

EMI had argued that the clause ”applies only to the physical product and doesn’t apply online” – an interpretation of the contract, he says, that “makes no commercial sense”.

Pink Floyd is famous for its “concept albums”, so there’s a moral rights issue here, and they thought to memorialize their desire that the concepts be kept “whole” in the contracts.

Court holds that Record label cannot sell Pink Floyd tracks individually without the band’s permission. A judge said the band’s contract applied both to physical albums and internet sales.

iTunes-friendly unbundling is not allowed for Pink Floyd, according to British courts.
- the court applied a band contract between EMI and Pink Floyd to physical album and internet sales
  - applied contract even though contract was negotiated before iTunes and other innovations
  - win for artistic control?
  - Bad news “for cash-strapped EMI, which has struggled financially since it was bought in 2007 for 2.4 billion pounds by private equity firm Terra Firma Capital Partners”?
- What are the effects of this market shift towards digital sales?
  - Digital music revenue is now 25% of revenues
- What are Pink Floyd’s damages in this situation?

Other examples of artists trying to preserve album intergrity.

The surviving members of The Beatles have yet to agree a deal to allow their music to be sold online.

Hard-rock band AC/DC also has withheld its music from iTunes, saying the group is not interested in selling individual tracks.

British alternative band Radiohead boycotted iTunes for years, saying it wanted fans to buy whole albums, but relented in 2008 in the face of the growing power of digital downloads.

Would this case have a different result if brought in US Courts?

Interview: Jason Pascal

Jason Pascal is currently Vice President & Senior Counsel at The Orchard (NASDAQ: ORCD), an independent distributor of music and video specializing in comprehensive digital strategies for content owners. The Orchard, founded in 1997, distributes recordings by over 12,000 labels via over 660 digital and mobile storefronts in 75 countries, as well as physical retailers across North America and Europe. Jason’s prior experience included his own film/music/telecommunications law practice from 2002-2005, running the music division at the 1st ad-supported, digital distribution model, called PlayJ, from 1999-2001, and he worked in Legal and Business Affairs at BMG International from 1996-1999.

Court Rules Men At Work’s ‘Down Under’ Lifted Riff
“Kookaburra Sits In The Old Gum Tree”

actual (Larrikin argues that damages in the region of 40% and 60% of royalties accrued by “Down Under” is “fair.” Is it?) and
future (about 30 years after the release of the infringing track?

Copyright Office news

http://www.whitehouse.gov/omb/assets/fedreg_2010/02232010_ipi.pdf
Mandatory Deposit of Published Electronic Works Available Only Online / Copyright Office Adopts Interim Regulation on Mandatory Deposit Governing Certain Works Published Only Online / Copyright Law Updates / Copyright Legal Updates

The Copyright Office has adopted an interim regulation governing mandatory deposit of electronic works published in the United States and available only online.
- The rule is interim, not final.
- The regulation establishes that online-only works, those without a physical version, are exempt from mandatory deposit until a demand for deposit of copies or phono records of such works is issued by the Office.
  - amends the definition of a “complete copy” of a work for purposes –> establishes best edition criteria for electronic serials available only online.

The Copyright Royalty Judges have published final regulations governing the statutory minimum fees to be paid by commercial webcasters under sections 112(e) and 114 of the Copyright Act.
- The regulations permit certain digital performances of sound recordings and the making of ephemeral recordings from January 1, 2006, through December 31, 2010. The regulations took effect on March 10, 2010
- http://www.lawupdates.com/summary/copyright_royalty_judges_publishes_rule_on_minimum_fees_to_be_paid_by_comme/

If you own or license intellectual property the office of the Intellectual Property Enforcement Coordinator (‘‘IPEC’’) requested the following information from intellectual property owners: 1) the impact copyright, trademark, and patent infringement have on creators/content owners; and 2) recommendations on how the federal government can improve intellectual property rights enforcement. Who should comment: inventors, songwriters, music publishers, recording artists, record labels, literary authors, book publishers, playwrites, film/tv producers, trademark owners, trade secret owners, technology owners, patent holders. Responses due March 24.

Tribal Leadership: David Logan’s TED talk

Gordon Firemark — Tue, 23 Mar 2010 05:16:35 +0000

Here’s an informative, inspriring and entertaining TED talk about leadership from my friend, Dave Logan. The information here is useful for everyone. Worth the 16 minutes.

If you like what you hear from David, get his books:

Tribal Leadership: Leveraging Natural Groups to Build a Thriving Organization

and

The Three Laws of Performance: Rewriting the Future of Your Organization and Your Life (J-B Warren Bennis Series)

Disclosure: Mr. Logan is a client of this firm, and the above links are amazon affiliate links.

Backlog at the Copyright office grows to two (2) years

Gordon Firemark — Mon, 08 Mar 2010 19:22:48 +0000

According to Anthony Verna, who blogs at Trademark, Copyright, and Entertainment Law Forum, the Copyright office now reports that its backlog for registration of copyrights is now as long as two years.

Given that copyright registration is a prerequisite to pursuing a copyright infringement lawsuit, it is very important that copyrights be registered as early as possible.

There are also some important advantages to filing copyright registrations early:

If a registration is filed within 90 days after first publication of a work, the successful plaintiff in an infringement suit will be entitled to statutory damages and attorneys fees.

Therefore, it is imperative that works be registered as soon as possible. Failure to do so could make it difficult to pursue infringers later on.

Our office can advise and assist with copyright registration. Please give us a call to discuss your options.

Asked & Answered: Co-authors, who owns what?

Gordon Firemark — Tue, 16 Feb 2010 06:00:51 +0000

Q: I have written a multi-award-winning screenplay and feel, after many rewrites, it’s getting close to being pretty good.

My question is about ownership: The screenplay was based on my novel, partly coauthored by a friend, who did about 10% of the work and storyline creation. How would my friend be compensated, and would I be doing the right thing by signing an agreement saying I own the rights to this screenplay?

A: When co-authors join together to create a single work , it’s called a work of “joint authorship”. Ordinarily, Joint Authors are equal owners of the work, and share equally in the proceeds from exploitation of the work. So, absent some other agreement, the co-authors are each entitled to half of the rights fees paid in relation to the book.

So, while it’s true that you own the rights to the screenplay, the screenplay is based on the underlying novel, in which you’re only a half-owner. Now, if you try to sell your screenplay, you can probably allocate some portion of the money to the ‘underlying rights’ (i.e., the novel) which you’ll share with your co-author, allocating the balance to the screenplay, but your co-author may not agree with your allocation, and could make trouble for you in the form of a lawsuit, or just embarrassing calls to the producers, etc.

My suggestion is to have a candid discussion with the co-novelist now… and work out the percentages on both the novel, AND your screenplay. You’ll definitely need to have a formal, written contract drawn up to memorialize things. Otherwise, you will find it very difficult to sell your screenplay. Producers always insist on a “clean” chain of title… so you’ll need to clear this up as soon as possible.

This situation is the reason that it’s so important to have a collaboration agreement in place before you begin working in earnest with another writer. The collaboration agreement could have addressed this very situation, or at least the “what if my co-writer doesn’t pull his share of the weight?” question. An experienced entertainment lawyer can draw up a collaboration agreement very quickly. It’s well worth the investment. Fixing these situations after-the-fact is always more costly and time consuming.

For a limited time, readers of this column can subscribe to my FREE e-course “6 ways to Finance A Feature Film” by visiting http://firemark.com/minicourse

The Law Offices of Gordon P. Firemark » Entertainment Law

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