A Legal Marvel: The Stark Difference Between Copyrights and Trademarks

Theatrical release poster

Since Iron Man was released to rave reviews in 2008, Marvel has created the most successful film franchise in history and has amassed a global empire while simultaneously re-energizing the comic book genre. As you might expect, many overly ambitious citizens have attempted to take a cut of Marvel’s profit by any means necessary, leading to some interesting lawsuits against the comic book mogul in the past few years.

In 2015 for instance, Ben and Ray Lai of Horizon Comics sued Marvel for copyright infringement on the grounds that Iron Man’s advanced super suit, as depicted in the company’s films, was plagiarized from Horizon’s character, Radix, a comic book figure who also wears a highly advanced suit of body armor. Although the indie comic company’s character was only created in 2001, the Lai brothers claimed that the original Iron Man wore a simple spandex suit when he debuted in 1963 and didn’t sport his new suit until 2008, when the movie franchise began. Luckily for Marvel, the Lai brothers’ allegations were considered questionable, and their case was quickly dismissed. The case does, however, raise an interesting question; what facts can substantiate a lawsuit based on a fictional character?

Fictional characters may be protected by both copyright and trademark law. In the intellectual property world, it is common knowledge that ideas themselves are not copyrightable. Instead it’s the expression of ideas in new and unique ways that earn a creator a limited-duration monopoly. In order for a fictional character to rise above classification as an idea or mere stock character, which isn’t entitled to copyright protection, the imagined figure must be sufficiently developed and contain distinctive characteristics. Using Iron Man as an example, Tony Stark is dramatized as a billionaire philanthropist playboy who is incredibly intelligent and annoyingly witty. Alone, none of these traits would make Iron Man a distinctive fictional character. But together, they constitute Tony Stark, a complex figure who has been entertaining audiences across multiple media forms for decades and is therefore entitled to the protection of copyright law.

Copyrights and trademarks protect different aspects of a figure’s likeness. While copyrights safeguard an owner’s exclusive right to use, copy, and exploit a fictional character, trademarks can lock down a figure’s name, physical appearance, and catchphrases when incorporated into or used in association with goods and services. Once again returning to the Tony Stark example, whenever one purchases a licensed product that sports Iron man’s likeness, the consumer should be able to trust that Marvel (now owned by Disney) proudly endorses the product, and that the product meets the comic company’s standard of high quality.

In addition to protecting different facets of intellectual property, trademarks and copyrights are governed by different systems of law with their own distinct rules, further distinguishing the two complex types of protection. For example, in terms of duration, copyrightable works created after January 1, 1978 are protected for the life of the last living author plus 70 years (or 120 years when the creator is a company). On the contrary, trademarks remain valid indefinitely, assuming that the mark at issue is still in use, and that the public continues to recognize the mark as a source indicator. Although the character of Tony Stark will eventually enter the public domain and be exploitable by the masses on the copyright side, for instance, Marvel could, in theory, benefit off of (and foreclose others’ rights to use) Iron Man in connection with merchandising forever.

When used together, copyrights and trademarks can be used to protect influential fictional figures from abuse by potential infringers while encouraging future creatives to come up with new, innovative, and fanciful characters. On the other hand, media companies’ motivation to keep tight control of their most popular characters keeps other from using them to tell new or unusual stories. That is, of course, unless the parody or fair use defenses apply . . . but that’s a story for another blog.

Matt Wagner is a law clerk at Berenzweig Leonard, LLP who is currently studying Music Business and Songwriting at Belmont University.

Appeal of “Blurred Lines” Verdict Backed by Artists

Roughly a year and a half after the highly controversial March 2015 jury verdict awarding Marvin Gaye’s children nearly $7.4 million in a copyright infringement lawsuit against Robin Thicke and Pharrell Williams, the “Blurred Lines” case is in the news again. Over two hundred songwriters, composers, musicians, and producers joined in the filing of an amicus brief in support of Thicke and Williams, who have appealed the verdict.

Following a trial in the U.S. District Court for the Central District of California, a jury concluded that Thick and Williams plagiarized Gaye’s 1977 hit “Got to Give It Up” to create “Blurred Lines,” the longest-running number one single of 2013. In July of 2015, the judgment was trimmed down to $5.3 million, and Gaye’s heirs were granted half of all future royalties from “Blurred Lines.” Thicke and Williams filed a notice of appeal that December.

The recent and overwhelming support of this appeal by the music community comes in the wake of a verdict that essentially creates artist liability for the creation of new works that are merely inspired by prior works, even unwittingly, rather than actually copied or plagiarized. The brief, whose signatories include members of Earth, Wind & Fire, Linkin Park, Weezer, Hall & Oates, and solo artists such as R. Kelly and Jennifer Hudson, points out that “by eliminating any meaningful standard for drawing the line between permissible inspiration and unlawful copying, the judgment is certain to stifle creativity and impede the creative process.”

While certain aspects of a musical composition are protectable by copyright, such as particular arrangements of notes and harmonies, others are not, such as style, feel, or the timbre of a certain combination of instruments. It became apparent early on that the verdict in this case relied almost exclusively on those non-protectable elements, as jurors seemed to pay more heed to stylistic similarities than the fact that Thicke’s “Blurred Lines” and Gaye’s “Got to Give It Up” are otherwise distinguishable works. Many artists forecast the possibility of this controversial verdict having a chilling effect on songwriting going forward. The filing of this amicus brief to overturn this result shows just how widespread that sentiment is throughout the music community.

Frank Gulino is an award-winning composer and attorney with Berenzweig Leonard, LLP. He can be reached at FGulino@BerenzweigLaw.com.

Led Zeppelin’s Victory on the Stairway to Heaven

Led Zeppelin emerged victorious in their recent copyright infringement lawsuit against the estate of founding Spirit guitarist, Randy Wolfe, proving once and for all that their smash hit, Stairway To Heaven, is a unique composition and arguably one of the most successful Rock and Roll songs of all time. But in addition to asserting Stairway’s dominance, this landmark decision could possibly change the music industry’s copyright infringement battle ground in the coming years.

Today, popular artists and their hit songs are often facing critical scrutiny. This new trend has led to an abundance of infringement accusations in the last decade. While some cases, such as the Sam Smith’s “Stay With Me” dispute, have been legitimate, other lawsuits, such as the Taylor Swift’s “Shake It Off” debacle, are viewed by many as completely unfounded. Especially after last year’s controversial “Blurred Lines” decision, which required the hit’s songwriters to pay over 5.3 million dollars in damages for replicating the “feel” of Marvin Gaye’s “Got To Give It Up,” many artists have been afraid that creative inspiration will inevitably turn into an expensive and time-consuming copyright lawsuit which will, in turn, stifle artistic creativity.

Thankfully, because of Led Zeppelin’s recent victory, common musical motifs, such as a descending chromatic scale, are now officially not copyrightable, restoring a level of creative freedom that could have been relinquished after 2015’s “Blurred Lines” verdict. Additionally, it is predicted that this legal triumph could diminish future gratuitous copyright allegations now that songwriters can see that these cases are difficult to win.

This case reminds artists that music is rooted in inspiration. For example, in 2009, musical comedy group, The Axis Of Awesome, compiled together 40 pop songs into one mashup in order to prove that musicians have been rehashing the “I-V-vi-IV” chord progression for decades. Although these artists all were inspired by their influences and incorporated the same musical motif, very few of the compiled songs actually sound similar when listened to side by side. In other words, chord progressions are not subject to copyright protection, much like ideas or facts. If one artist could claim a limited monopoly on a musical progression, then the world would be deprived of future artistic creations and music would remain stagnant. Now that Led Zeppelin has defeated their legal opposition, musicians can now officially stand by the fact that chord progressions are useful tools that hopefully can be utilized without fear of infringement. In the end, this trial will go down in history as an important victory for artistic creativity.

Matt Wagner is a law clerk at Berenzweig Leonard, LLP who is currently studying Music Business and Songwriting at Belmont University.

Seth Berenzweig is the managing partner of  Berenzweig Leonard, LLP, works with artists and musicians, and is a member of the  Recording Academy. He can be reached at sberenzweig@BerenzweigLaw.com.

Trial Underway in Stairway to Heaven Lawsuit

Trial is underway in a U.S. District Court for the Central District of California, where the legendary British rock band Led Zeppelin has been sued for money damages and writer credits for the band’s iconic megahit “Stairway to Heaven.” In 2014, the estate of guitarist Randy California, a founding member of the band Spirit, filed a lawsuit claiming that Stairway’s iconic introduction was lifted directly from Spirit’s song “Taurus,” which Led Zeppelin allegedly heard while opening for Spirit on several concerts in the late 1960s.

Unable to dismiss the case on summary judgment, the band found itself in court this week, with guitarist Jimmy Page taking the witness stand for an hours-long grilling by plaintiff’s counsel. Page’s testimony centered on plaintiff’s counsel’s attempts to demonstrate Led Zeppelin’s familiarity with Spirit’s music, as well as any personal contact between the bands. Surprisingly, Page testified that he never heard Taurus until something appeared on the internet just a few years ago drawing attention to the comparison between Taurus and Stairway. Page further testified that, concerning a 1969 concert in Denver on which both Zeppelin and Spirit performed, he didn’t even know he was opening for Spirit; Page believed that Zeppelin was opening for Vanilla Fudge, another rock band. Additionally, he recalled that the members of Led Zeppelin left the venue immediately after their opening set in order to get to another performance the next day.

As trial continues to unfold, the legal battle surrounding one of the most iconic songs of all time appears to get more and more contentious. We can likely look forward to more colorful witness testimony, including from lead singer Robert Plant, and musicians everywhere should be keeping a close watch to see if the plaintiffs are ultimately successful in rewriting rock and roll history by having Randy California included as a writer on Stairway to Heaven.

Frank Gulino is an award-winning composer and attorney with Berenzweig Leonard, LLP. He can be reached at FGulino@BerenzweigLaw.com.

“The Most Interesting Man in the World” Gets His Counterclaim Tossed

Last fall, Jonathan Goldsmith, known as the “most interesting man in the world” of Dos Equis advertisement fame, was sued for breach of contract by his former talent agency after allegedly withholding commissions owed to the agency. Goldsmith, who began portraying the “most interesting man in the world” in 2006, earns approximately $1 million per year and is required by contract to pay a 10% commission to his talent agency. The ongoing lawsuit in Los Angeles is over Goldsmith’s alleged failure to pay those commissions.

What began as a straightforward breach of contract case took an interesting turn when Goldsmith filed a counterclaim in February, alleging that the owner of the talent agency was not who he said he was, but rather a failed actor who assumed a fake name in an effort to launch a new career as a personal manager. The counterclaim further alleges that after Goldsmith executed a contract extension with Dos Equis, which required strict confidentiality of its terms, Plaintiffs disclosed its payment terms, damaging Goldsmith’s relationship with Dos Equis and jeopardizing his future as the beer’s spokesman.

This month, Los Angeles Superior Court Judge Barbara Meiers granted Plaintiffs’ motion to dismiss Goldsmith’s counterclaim, noting that Goldsmith was unable to establish any probability of success on his claims and that there was no basis to support the countersuit. Goldsmith plans to appeal the dismissal of his counterclaim, and this litigation is shaping up to be costly for both sides. The case serves as an interesting reminder that staying out of court and avoiding costly litigation requires not just ironing out specific contract terms up front, but also adhering to them. A textbook example of when litigation simply isn’t worthwhile, this case indicates that it would likely have been less costly for Goldsmith to pay the 10% commission than to wage war in the courtroom by bringing frivolous counterclaims.

Frank Gulino is an award-winning composer and attorney with Berenzweig Leonard, LLP. He can be reached at FGulino@BerenzweigLaw.com.

Stairway to Heaven Lawsuit Trial Date Set

If you work in or around the music industry, you’re probably well aware of the fact that Led Zeppelin, one of the most popular bands of all time, has been embroiled in litigation over the writer credits for the band’s iconic megahit “Stairway to Heaven.” In 2014, the estate of guitarist Randy California, a founding member of the band Spirit, as well as another band member, sued Led Zeppelin in the U.S. District Court for the Eastern District of Pennsylvania for copyright infringement over the musical similarities between “Stairway to Heaven” and Spirit’s “Taurus.” The lawsuit states that Stairway’s iconic introduction was lifted directly from Taurus, which Led Zeppelin heard while opening for Spirit on several concerts in 1968 and 1969, and seeks monetary damages as well as crediting Randy California as a writer on Stairway to Heaven.

While Led Zeppelin was unsuccessful in dismissing the lawsuit, the band succeeded in having the case moved from Pennsylvania to Los Angeles, where a federal district judge has slated trial to begin on May 10th, 47 years to the day after Zeppelin performed a concert in Vancouver for a crowd of 4,000. Notably, the band’s defenses in this case don’t deny that Taurus was appropriated, or claim that the songs are dissimilar. Instead, Led Zeppelin claims that the Plaintiffs have no standing to bring this lawsuit in the first place, for three reasons. First, the band asserts that Randy California wrote Taurus as a work for hire, meaning that he created the music pursuant to his contract with Hollenbeck Music and solely on Hollenbeck’s behalf, and therefore never owned the copyright himself. Second, the Defendants argue that California waived any claim to the work in a 1991 interview when he was asked about the similarities between Taurus and Stairway, ultimately responding that “if they wanted to use [Taurus], that’s fine,” and “I’ll let them have . . . Taurus for their song without a lawsuit.” Finally, the members of Led Zeppelin claim that they have been prejudiced by the fact that Plaintiffs waited over 40 years to bring this claim, during which time Stairway to Heaven became one of the highest-earning songs in history, and increasing the amount of damages sought by the Plaintiffs.

This is a case of landmark proportions. The fact that Led Zeppelin, a British band, was found to be subject to personal jurisdiction, first in Pennsylvania and now in Los Angeles, demonstrates that jurisdictional requirements can be met by non-resident musicians simply by marketing and selling records in a particular place. Recent efforts by the parties to settle the case have been fruitless, and we expect the case to proceed to trial roughly a month from now, as scheduled. Stay tuned as the court finally resolves this copyright infringement matter involving one of the most iconic, widely recognizable songs of all time.

Frank Gulino is an award-winning composer and attorney with Berenzweig Leonard, LLP. He can be reached at FGulino@BerenzweigLaw.com.

‘Big Bang Theory’ Producers Sued in “Soft Kitty” Copyright Case

Producers of the hit TV show The Big Bang Theory got a legal ‘bazinga’ in a new lawsuit contesting the show’s allegedly unauthorized use of nursery rhyme lyrics written eight decades ago by a New Hampshire school teacher.  The lawsuit, filed in New York federal court by the daughters of Edith Newlin on behalf of their late mother’s estate, asserts that Ms. Newlin held the lyrical copyright, and that the show never bothered to seek permission from her estate to use the now famous Soft Kitty lyrics.  The lawsuit asserts the defendants profited from such use not only from the show on at least eight episodes, but also through lucrative merchandising including T-shirts, toys and other products.

This case demonstrates interesting problems in dealing with copyright protection.  The defendants apparently thought they negotiated a proper license to use the lyrics from Willis Music, a Kentucky-based company which published a compilation of ‘Songs for the Nursery School’ in 1937.  Most lyrical and music copyrights are assigned to publishers, so it may have been understandable for the show’s producers to believe they obtained necessary permission.  However, Ms. Newlin’s estate is asserting that Willis Music only had the limited right to include the lyrics in that book but did not acquire the underlying copyright from Edith Newlin.  If that assertion is correct, these defendants, which include sophisticated companies such as Warner Brothers, Turner Broadcasting and CBS, may have goofed and did not have the right to have Sheldon Leonard and company sing those lyrics.

Viewers should stand by to hear what defenses these companies assert to the lawsuit, and whether they try to pass some of the blame on possible copyright confusion to the publisher, even though Ms. Newlin’s estate asserts that Willis never claimed it held the copyright.  In the meantime, this lawsuit can be considered a wake up call on how important it is to ensure proper use of intellectual property protected by copyright.  Otherwise, you may need Penny singing you a comforting lullaby – and make sure her song has nothing to do with a soft kitty or little ball of fur.

Seth Berenzweig is a managing partner at Berenzweig Leonard, a DC region business law firm that includes a music, media and entertainment practice.