THIS BLOG HAS MOVED

I’m pleased to announce the launch of my official website. – www.jnslawoffices.com

My blog will not be embedded into that site, so this blog page will not be updated any more.

I apologize for any inconvenience, but please reset any bookmarks to: blog.jnslawoffices.com

La-La-Lawsuits: A Look Back on August’s Finest Litigious Moments

Florida rapper J.R. Bricks changed the name of his song “Waffle House” to “After the Party” after  he received a cease-and-desist letter from Waffle House, Inc.  Despite the title change, the Waffle House reference remains in the chorus.

Lady Gaga is being sued by Rebecca Francescatti who claims the singer and her producing partner stole her song, “Juda,” to create the hit “Judas.” The plaintiff says she introduced her song to her former bass player and a sound engineer who was working with Gaga.  How similar are the two tracks? You be the judge. “Juda” is available here.  Gaga’s “Judas” here.

As I wrote about in a previous post, Spotify was caught using some nasty cookies that track customers even after they’ve tried to delete the cookies. Now, the popular music streaming service that just launched in the U.S., is one of the latest targets of a class action over breaches in privacy laws stemming from their use of the cookies.

The Writers Guild of America filed a claim against Bring It On: The Musical on behalf of Jessica Bendinger, the screenwriter of the 2000 Universal film on which the new musical is based.  The confidential arbitration demand asserts that Beacon Communications Corp. and Beacon Communications, LLC are exploiting Bendinger’s dramatic rights in the cheerleader-themed Bring It On without her consent, in violation of the guild agreement’s “separated rights” provisions. It seeks damages and an injunction against Bring It On: The Musical, which is being coproduced by Universal Pictures Stage Productions, Beacon Communications and others.  Bendinger had been working on developing her own stage version of the story for the past six years and found out through the rumor mill that the show was being shopped without her involvement.

Dr. Phil and CBS have settled a lawsuit by Shirley Dieu and Crystal Matchett who alleged they were lured by promises of getting personal counseling from Dr. Phil himself, only to be locked during a 2007 filming of the show in a “mock house” on a sound stage and “forced to be in the same room with a completely naked live man while he exposed his entire naked body, genitals and all.”  Last January a California judge denied CBS’ anti-SLAPP motion and determined that the women showed a likelihood of success.  The details of the settlement have not been released.

August’s Notable Hirings, Firings & Promotions

Richard Palmese is leaving his post as EVP of Promotion at RCA Music Group.  Tom Corson, another longtime executive there, was named the label group’s president and chief operating officer.

David Bohrman, the former chief of CNNs Washington bureau, is now the president of Current TV.

David Foster will soon lead UMG-owned Verve Music Group.  He is expected to focus the label’s roster on adult contemporary music.

Rob Stevenson joins Universal Republic as Executive VP of A&R, reporting into CEO Monte Lipman and COO Avery Lipman.

Peter Edge has been named CEO of RCA Music Group, the umbrella group of RCA, J, Arista, and Jive.

RIAA president Mitch Bainwol has officially stepped down, moving away from the music industry to the position of chief executive at the Alliance of Automobile Manufacturers.  Replacing Bainwol as chairman and chief executive will be Cary Sherman, the organization’s president since 2001.

Pandora named Steven Kritzman as Senior Vice President of Advertising Sales.

The Orchard has taken on former Random House executive Peter McCarthy as SVP of Marketing.

Philip Ginthör is now CEO of Sony Music Entertainment GSA (Germany, Switzerland and Austria).

Edgar Berger has been named President & CEO of International at Sony Music Entertainment.

Don Was is now Chief Creative Officer at EMI-owned Blue Note Records.

Ethiopia Habtemariam, an influential young executive from Universal’s music publishing arm, has been named Motown’s senior vice president.

Stephen White is the new President of Gracenote.

Clear Channel Radio promoted Tom Poleman to President of Clear Channel National Programming Platforms and moved  Michele Laven to EVP of Strategic Partnerships.

Eric Dingman was ousted from his role as leader of Classics at EMI.  David Kassler will become the Chairman of Classics and Amanda Cupples will function as the Chief Operating Officer for the Global Classics business, focusing on strategy development and global coordination.

TAG Strategic has just named Jeff Becker as VP Social Media and Brand Marketing.

Bruno Mars manager Brandon Creed is now an A&R consultant for Universal Republic and Island Def Jam Motown, reporting into group chairman Barry Weiss.

More changes at Island Def Jam with layoffs including Garrett Schaefer (Bon Jovi, M Etheridge, Taio Cruz), Paul Resta (The Killers, Neon Trees, Noel Gallagher, Portishead, Noah and the Whale, Jon McHugh (head of Film/TV), JP Robinson (head of Creative) Sam Dailey (head of Phys Retail) and 30+ staffers.

Shortly following the layoffs at Island Def Jam, Sony Music Entertainment cut an estimated 25 employees, including Larry Kanusher (senior VP of business and legal affairs for global digital business), Tom Glaser (VP of sales and marketing research), and Linda Ury Greenberg (VP of consumer research).

Edgar Bronfman, Jr. is now Chairman of the freshly-acquired Warner Music Group, while Stephen Cooper will take on Bronfman’s former position of CEO.

And some news in lawyer-land…

The Directors Guild has moved David Dreyfus from associate general counsel. Tiffanie Baker has been promoted to assistant general counsel to fill his spot. The moves come a few days after the guild’s Russ Hollander, David Korduner and Bryan Unger were promoted to associate national executive directors.

A Tragic Week in Live Performance; Two Stages Collapsed, Lives Lost

On August 13th, due to extreme winds, the stage at the Indiana State Fair collapsed, killing five and injuring around 40 people.  The confirmed deceased are Indiana residents Alina Bigjohny of Fort Wayne, Tammy Vandam of Wanatah, and Glenn Goodrich and Nathan Byrd of Indianapolis, as well as Christina Santiago of Chicago.

Sara Bareilles, who had performed just prior to the accident, has released the following statement:

The accident at the Indiana State Fair felt like a bad dream.  The weather changed in a matter of minutes and the stage collapsed in a matter of seconds. We are shocked and saddened by this horribly tragic circumstance and we are all praying for those affected.  The emergency response was incredibly speedy and the people of Indiana as well as the crews from the show were beyond brave and working hard to help each other.  My heart aches for the lives lost or injured as well as their families.  We will do whatever we possibly can to help heal the hurt from this very sad day.

State Officials update the media and public on the tragedy at the Indiana State Fair through a press conference the following day:

Only five days later, another tragic accident occured at a live music festival, this time at Pukkelpop in Belgium, when a heavy storm uprooted a tree and slammed it into the main stage, causing its collapse.  Five are dead with over 50 people suffering injuries.

 

Show Recap: Charlene Kaye, Quintus @ Rockwood Music Hall

Last night, I had the pleasure of seeing Charlene Kaye play a last minute set at Rockwood Music Hall, Stage 1.  It was just Charlene on piano (and sometimes guitar) and a handful of special guests trickling on and off the stage.

Charlene’s new material is excellent, and I can’t wait to hear her new album.

One of the special guests was Darren Criss of Glee fame (he’s Kurt’s boyfriend Blaine on the show).

Here is a video of Charlene and Darren singing “Dress and Tie.”

Later on in the evening, I returned to Rockwood to see the band Quintus.  I hadn’t seen them play for probably 5 years, and it was a really solid show.  I love seeing bands when its clear they’ve played together for years.  These guys love to play with each other, and it comes across through their music.  I loved their new tunes (well, new to me at least) and can’t wait to check out the recorded versions.

After Quintus, on the way out, I listened to about a song of the next band.  I’m watching them play and noticing that something is a little off.  See if you can spot in this video what makes this band different from all other rock bands (at least all that I’ve seen) – warning: spoiler after the video.

Drumming with his BARE HANDS! Ouch! It hurts just watching it.

Completely Unrelated but.. How to Travel Around the World for $418

Just a heads up, this post has absolutely nothing to do with law, music, or IP.

My iPhone recently “broke” (long explanation omitted here but thankfully it happened 3 days before my warranty was expiring).  While I was at the Apple store genius bar, I had a great chat about travel with my assigned genius.  She told me about a recent article she had read about a guy who booked an around the world plane ticket, with 15 different destinations on the itinerary, for $418.  Traveling is a huge passion of mine, so, of course, I was intrigued.

Basically, if you open credit cards linked to airline mileage perks, you can rack up a substantial amount of miles quickly.  No need to change spending style or live extravagantly.

Here is the article.  – http://gizmodo.com/5710654/how-to-fly-35000-miles-visit-4-continents-9-countries-and-15-cities-for-418

Read at your own risk.  You will definitely spend the next two hours on an airline alliances website planning out your journey, so if you have a lot on your plate today, I’d hold off on reading until the weekend.

My around the world adventure (if / when it ever actually happens) will take me down through South America, across to Austrailia, up to Jakarta and Bali, then through Singapore, Thailand, Vietnam (and I’ll do Laos and Cambodia while I’m there), a couple stops in China, Korea, ending in Japan, then back to NY.

Where would you go??

Vevo Partners with Rcrd Lbl

Via Digital Music News…

Most likely motivated by a desire to build up some indie cred, Vevo has finalized a content partnership with Rcrd Lbl.  The arrangement will consist of a featured Vevo video every Monday on the both the Vevo and Rcrd Lbl sites, in conjunction with a download of the track and/or remixes.

“With a high-quality video to view and a download to take along with you, it’s like a musical party with a downloadable goody bag that you can attend every Monday,” the company described the feature.  Musical party + goody bag sounds good to me!

The first feature is retro-indie-pop band the Cults’ track “Go Outside,” a clear departure for Vevo away from its most hit up videos (Jennifer Lopez, Nicki Minaj, Pitbull, Beyonce, etc).

Louboutin Loses to YSL; Red Sole not Trademark Protected

As I mentioned in a previous post, Christian Louboutin sued Yves Saint Laurent in April, alleging that YSL’s use of red colored soles infringed Louboutin’s trademarked red sole.

The court yesterday denied Louboutin’s request to grant a preliminary injunction restricting YSL from marketing the shoes at issue during the pendency of the action.  The court held that Louboutin did not establish a likelihood of succeeding on the merits because Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.

Overview of the case is below; full opinion can be read here.

Background

The USPTO approved registration of Louboutin’s red sole mark in 2008.  In early 2011, Louboutin approached YSL about a number of shoes in YSL’s Cruise 2011 Collection that incorporated red soles of a shade that Louboutin thought closely resembled its trademark protected color mark.  YSL refused to remove the shoes from the market, so Louboutin filed suit against YSL for  federal claims of trademark infringement and counterfeiting, false designation of origin and unfair competition and trademark dilution, as well as state law claims for trademark infringement, trademark dilution, unfair competition and unlawful deceptive acts and practices. YSL then asserted counterclaims seeking cancellation of the Red Sole Mark on the grounds that it is not distinctive, ornamental, functional, and was secured by fraud on the PTO, as well as damages for tortious interference with business relations and unfair competition.

The issue at hand was whether, despite Louboutin’s “innovation” and widespread public association between the brand and the red sole, trademark protection should have been granted.

Discussion

To obtain a preliminary injunction, Louboutin must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor]. 

The court looked to whether trademark infringement had occurred, first evaluating whether the mark at issue should be protected by trademark.  The registration of the red sole mark gives rise to a statutory presumption of protection; however, this presumption can be rebutted.  A color can be a protected trademark when it has acquired a secondary meaning associated with the brand, but it may not serve a function aside from being a brand identifier.  Specifically, when related to fashion, the court noted, “color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes.”  Some color marks used in fashion have merited trademark protection, usually being a combination of colors in a distinctive pattern that identifies the brand (think Louis Vuitton or Burberry). 

The court here addressed the narrow issue of whether a single color mark can be granted for use in the fashion industry.  By comparing fashion designers to painters, the court recognized the importance of the use of color in this specific industry and the role of color serving a creative, rather than commercial, purpose. “No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise.”  Additionally, Louboutin himself acknowledges that the red sole serves nontrademark functions.  Specifically, it is “sexy,” “engaging” and “attracts men to women who wear [the] shoes.”  The court also found that granting of trademark protection over the mark would significantly hinder competition.  Hence, Louboutin could not prove a likelihood of success on the merits of the case, so the court denied the preliminary injunction.

Of note is the fact that the court did not actually find in favor of YSL because YSL had not brought a motion for summary judgment.  The court did note that if YSL had brought summary judgment, “the Court’s conclusion that the Red Sole Mark is ornamental and functional in its fashion industry market would compel it to grant partial summary judgment in favor of YSL on YSL’s counterclaims seeking cancellation of Louboutin’s mark.”

The court did order all parties to appear at a “case management conference on August 17, 2011 at 2:00 p.m., at which Louboutin shall show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment cancelling Louboutin’s trademark at issue here for the reasons stated in the Court’s decision above.”