Olympic trademarks, album integrity, and more.

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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

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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)

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


Athletes’  Right of Publicity claims against NCAA:


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


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:



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.


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://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
  • 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

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

  • 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.

  • 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.


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