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.

Internet Service Provider Held Responsible for Users’ Infringement in Landmark Decision

BMG Rights Management, one of the world’s largest music publishers, has been awarded a $25 million verdict by a federal jury after Cox Communications was found to be liable for the copyright-infringing actions of its users.

Following a week-long trial in the U.S. District Court for the Eastern District of Virginia, it was determined that Cox was on the hook for the actions of its users as a result of its failure to reasonably implement a repeat-infringer policy. While the Digital Millennium Copyright Act offers a number of “safe harbors” that typically protect internet service providers from liability for copyright infringement, Cox was found to fall outside of these safe harbors when it failed to crack down on repeated piracy. For example, after identifying known copyright pirates among Cox users, BMG sought to enlist Cox’s help in sending cease and desist letters to those users and/or terminating their internet service. Cox purported to have a policy of terminating the service of repeat copyright infringers, but in practice retained them as high speed internet customers.

BMG controls the rights to music by popular artists including David Bowie and Bruno Mars, among others. At issue in this particular lawsuit were 1,397 different copyrighted works that were downloaded illegally a total of nearly 2 million times. The jury found Cox liable for willful contributory infringement, awarding $25 million in damages. Moreover, Cox is now facing a separate lawsuit from its insurance company, which is trying to skip out on the tab in the BMG case due to “Cox’s business policy and practice of ignoring and failing to forward infringement notices and refusing to terminate or block infringing customers’ accounts.”

The impact of this landmark decision on future internet service provider liability for copyright infringement seems clear: you can probably expect ISPs to crack down much harder on copyright abuse, probably going as far as to terminate the service of repeat offenders. In the wake of this verdict, the failure to do so could result in significant liability for the service provider, in what appears to be a clear victory for artists and rights holders.

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

Recent Copyright Law Decisions Have the Industry Jammin’

The entertainment industry is no stranger to copyright law, but three recent federal court decisions may just throw things for a loop.

Earlier this summer, the Fourth Circuit clarified the “substantially similar” test, which is used to determine copyright infringement. David Copeland, a singer and songwriter, alleged that Justin Bieber and Usher’s song, Somebody to Love, was a ripoff of his own song. In considering whether the two works were “substantially similar,” the Fourth Circuit applied a two-part analysis: whether the works were “intrinsically” (in other words, subjectively) similar and whether they were “extrinsically” (objectively) similar. Although the extrinsic analysis often involves scholarship and expert analysis, the subjective analysis is based on the general audience’s perception. The Court found that both songs had an identical chorus, or “hook.” Since the hook is typically the most memorable part of any song, the Court concluded that a jury could reasonably find the two songs substantially similar and remanded the case back to the lower court. The case could go to trial as early as next year.

The Ninth Circuit, meanwhile, has weighed in on an eight-year-long battle involving the extent of copyright holders’ claims over copyrighted material. In 2007, Stephanie Lenz sued Universal for directing YouTube to take down a 29-second video clip of her son bobbing to Prince’s Let’s Go Crazy. Universal asserted that the clip infringed Prince’s music copyright. Section 512(c) of the Digital Millennium Copyright Act (DMCA) allows service providers, like YouTube, to avoid copyright infringement liability if they timely remove or disable access targeted content after receiving a takedown notification about the content. Notoriously known as the “dancing baby” case, Lenz’s claim alleged that Universal did not evaluate whether the uploaded video’s use of Prince’s song qualified as “fair use” before targeting it for takedown. The Fair Use Doctrine permits the use of copyrighted material in certain situations, such as parody, news reporting, or incidental use, based on application of a subjective, multi-part test. Although the DMCA does not explicitly require fair use analysis prior to issuance of a take-down notice, the Ninth Circuit held that “fair use is not just excused by the law, it is wholly authorized by the law.” According to the opinion, the DMCA requires copyright holders to consider fair use before sending a takedown notification, or face liability under the statute. This could change completely many large media companies’ anti-infringement campaigns – most of which have an automated element – since the highly subjective fair use analysis can’t be performed by a computer.

Finally, the United States District Court for the Central District of California ruled that the “Happy Birthday” song now belongs to the public. After a class action suit challenged Warner/Chappell Music’s rights to the song, Judge King determined that the original copyright covered the song’s piano arrangement, but not the lyrics, and that the whole work has since fallen into the public domain. While the ruling serves as a fun law school case-study, it also has serious business implications for Warner/Chappell Music. Since acquiring the copyright in 1988, the company has profited significantly through commercial licensing of the song – to the tune of almost $2 million a year. Judge King’s ruling may now provide an avenue for the licensees to retrieve their money back. A Happy Birthday indeed!

With a number of other major copyright cases making their ways through the courts this year, even more changes may be on the horizon, so stay tuned for more industry updates.

Sara Almousa is a law student at the George Mason University School of Law and a law clerk at the firm of Berenzweig Leonard, LLP.

Judge Modifies Verdict in “Blurred Lines” Lawsuit

In March, a jury awarded Marvin Gaye’s children nearly $7.4 million after rendering a verdict that singers Robin Thicke and Pharrell Williams plagiarized Gaye’s 1977 hit “Got to Give It Up” to create “Blurred Lines,” the longest-running number one single of 2013.

Now, a federal judge has modified the verdict, trimming more than $2 million off the singers’ liability, but also giving Gaye’s family 50% of the song’s future royalties. Thicke and Williams both sought a new trial, and Gaye’s family moved for an injunction that would have blocked sales and performances of Blurred Lines; all three requests were denied, with the judge instead arriving at what he perceived to be the more equitable conclusion of reducing infringement damages while providing Gaye’s estate with a share of future profits.

Thicke and Williams, who each earned more than $7 million apiece on “Blurred Lines,” claim to have written the song independently, but Gaye’s estate argued that a number of distinct elements from “Got to Give It Up” were used in “Blurred Lines.” It was ultimately left up to the jury to determine whether the defendants infringed upon Gaye’s copyright or simply emulated the sound of Gaye’s work. The jury concluded that “Blurred Lines” infringed on Gaye’s copyright, leading to a great deal of debate regarding the distinction between plagiarism and mere influence of another song or genre.

It is important to note that certain aspects of a musical composition are protectable by copyright, such as particular arrangements of notes and harmonies, while others are not, such as style, feel, or the timbre of a certain combination of instruments. In this case, it would be naïve to believe that Gaye’s “Got to Give It Up” did not influence Thicke and Williams in crafting “Blurred Lines,” but copyright protection is not intended to extend to mere influence. While particular expressions of musical ideas can be protected, the ideas themselves, such as, for example, pairing an electric piano and a cowbell with a disco beat, cannot. These important points seem to have gotten lost in this case.

The judge’s willingness to modify the verdict while also denying the parties’ motions for a new trial serves to highlight the controversy surrounding the court’s initial decision. On its face, “Blurred Lines” simply doesn’t infringe on Gaye’s “Got to Give It Up,” an opinion that appears to be extremely prevalent among those with musical training. This recent development may be a recognition of that fact, while still attempting to give some teeth to current copyright protections. Either way, it will be interesting to see whether the chilling effect on songwriting that has been forecast by some in the industry will play out.

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

Heroes Held Hostage in Film: How Old Copyright Deals are Getting in the Way of Superhero Team-Ups

In February 2015, the Walt Disney Company ‒ which owns Marvel Worldwide ‒ and Sony Corp. reached an agreement that will permit the enormously popular web-slinger, Spider-Man, to appear in upcoming Marvel superhero movies.  To many Marvel comics readers and Spidey fans, the need for this deal may be quite confusing, given that Spider-Man is a member of the Marvel superheroes team, the Avengers, and first appeared in a comic published by Marvel.  Strange though it may seem, the complexities of intellectual property law ‒ particularly the severability of film and print rights associated with particular superhero characters ‒ make deals like this one a necessity when it comes to characters whose various entertainment rights are held by different companies.

The copyright to a protectable property, like the character of Spider-Man, is actually made up of specific subsidiary property rights, such as print rights (the right to write about Spider-Man in books and comics), digital rights (the right to reproduce or use Spider-Man in digital media), film rights (the right to represent Spider-Man in TV shows and movies), foreign rights (the right to represent or market Spider-Man outside the U.S.) and derivative rights (the right to reinvent or reinterpret the character of Spider-Man).  For this reason, character copyrights are often spoken of in simple terms as a “bundle of rights” or “bundle of sticks.”  For any given copyrighted character, the sticks in the larger copyright bundle (the “film rights stick” or “derivative rights stick”) can be separated out, locked up, or given away by the original owner.

Marvel decided to begin breaking up some of its bundles of rights when it was faced with impending financial collapse in the late 1980s.  To obtain the funds it needed, Marvel lent out some of the sticks associated with characters like Spider-Man, the Fantastic Four, and the X-Men to different entertainment industry players for a certain amount of time.  The rub is that now, in the midst of the present comics industry boom, some of Marvel’s most valuable sticks are still on loan to other industry players.  Sony Pictures, for instance, presently holds the screen rights to Spider-Man, while 20th Century Fox holds the screen rights for the Fantastic Four and X-Men.  This means that while Marvel (and its corporate parent, Disney) retain the right to represent these characters in printed comic books and other media, it can’t put them in movies without getting permission.  This fact has led to such odd moves as Marvel’s recent decision to cancel its popular Fantastic Four comic series and forbid the creation of new X-Men characters in an apparent bid to trip up 20th Century Fox’s screen plans for the Fantastic Four and X-Men franchises.  

Glamorous as it may be, the trade in characters and rights associated with them is a business, and as in all business markets, there is risk in play whenever an original owner decides to give some of its rights away.  Had Marvel foreseen the present superhero culture frenzy back in the 1980s, it might have chosen to license out the film rights to its characters in different ways.  As things stand now, Sony may maintain its grip on Spider-Man for quite some time, since the studio’s lockup on the character’s screen rights is kicked out every time the character is represented in a new film (hence, the multiple reboots the character has seen in recent years).

With entertainment juggernauts like Avengers 2: Age of Ultron and Batman v. Superman on the horizon, the present comics craze shows no signs of slowing down.  As things charge along, expect intricate behind-the-scene legal workings to continue playing a big role when it comes to which characters will hit the big screen, and which may have to wait until the old deals of the 1980s and ‘90s have run their course before they can be used to their full potential.

David Moon is a law clerk with Berenzweig Leonard expecting his J.D. in May 2015. Ryen Rasmus is an associate attorney practicing in the Entertainment and Music Industry Law Group of Berenzweig Leonard.  He can be reached at RRasmus@BerenzweigLaw.com.

L.A. Jury Delivers $7.4 Million Verdict in “Blurred Lines” Lawsuit

A jury has awarded Marvin Gaye’s children nearly $7.4 million after determining that celebrity singers Robin Thicke and Pharrell Williams plagiarized Gaye’s 1977 hit “Got to Give It Up” to create “Blurred Lines,” the longest-running number one single of 2013.

Thicke and Williams, who each earned more than $7 million apiece on “Blurred Lines,” claim to have written the song independently, but Gaye’s estate argued that a number of distinct elements from “Got to Give It Up” were used in “Blurred Lines” and it was ultimately left up to the jury to determine whether the defendants infringed upon Gaye’s copyright or simply emulated the sound of Gaye’s work. The jury concluded that “Blurred Lines” infringed on Gaye’s copyright, and that decision could have a chilling effect on musicians seeking to emulate the sounds of certain artists, genres, or eras going forward.

Certain aspects of a musical composition are protectable by copyright, such as particular arrangements of notes and harmonies, while others are not, such as style, feel, or the timbre of a certain combination of instruments. In this case, it would be naïve to believe that Gaye’s “Got to Give It Up” did not influence Thicke and Williams in crafting “Blurred Lines,” but copyright protection was not intended to extend to mere influence. While particular expressions of musical ideas can be protected, the ideas themselves, such as pairing an electric piano and a cowbell with a disco beat, cannot.

To the untrained ear, the similarity between the two songs may be striking. A musically trained ear, though, may notice that the two songs are in different keys and utilize different chord progressions. In other words, the success of Gaye’s infringement claim depended largely on the average juror’s inability to see past the similarities between the songs’ unprotectable characteristics (tempo, use of cowbell and Rhodes piano, use of syncopation, similar bass groove) to realize that “Got to Give It Up” and “Blurred Lines” are in fact two different songs whose similarities are mainly limited to characteristics that cannot be protected by copyright.

Had the jury been comprised of the defendants’ peers in the music profession, there is a strong possibility that Thicke and Williams would have prevailed. In light of this huge verdict, however, artists should be increasingly vigilant in their endeavors to emulate the sounds of other artists, genres, and eras in furtherance of their own art. Although the result of this case seems to blur the lines between what is protectable by copyright and what isn't, it nonetheless serves as a reminder that copyright infringement can lead to costly outcomes.

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

Big Verdict for Funk Legend Sly Stone Puts Royalties in the Spotlight

Rock and Roll Hall of Famer Sly Stone has been awarded $5 million by a Los Angeles jury in a breach of contract case claiming that Stone’s former manager and business partners cheated Stone out of more than a decade’s worth of royalties. Stone is best known as the leader of the funk group Sly and the Family Stone, which he led to fame in the 1960s and 1970s with a number of big hits, including “Dance to the Music” and “Everyday People.”

Photo: www.slystonemusic.com

In 1989, a then-destitute Sly Stone was approached by manager Gerald Goldstein, who promised to revitalize Stone’s career. Goldstein proceeded to form Even St. Productions Ltd., of which Stone was made an employee and co-owner, and to which all royalties from Stone’s music were assigned. Although Sly Stone was supposed to receive a share of the royalties that Even St. Productions collected on his behalf, Goldstein and his attorney allegedly redirected and misappropriated the royalty revenue, and Stone received no royalty payments between 1989 and 2000. With evidence of alleged shady accounting practices coming out during trial, the defense’s argument that the royalty revenue went to paying off Stone’s IRS debt failed to convince the jury, who awarded Stone $5 million in damages.

This is an important verdict for artists, entertainers, and composers of all kinds; not only does it reinforce the importance of a creator’s rights to work generally, but also the strength of a creator’s rights to royalties specifically. This case also brings attention to the oppressive, one-sided deals many entertainers are presented with on a routine basis. In desperate times, the promise of a revitalized career sounds too good to pass up. However, it is certainly in every artist’s best interest to dig deeply into the terms of any management agreement to ensure that someone who promises you the world isn't trying to take the shirt off your back. A verdict of this size reminds us that, even in an age rife with music piracy and digital consumption, the public recognizes an artist’s right to profit from his or her work, and disapproves of those who would take advantage of the artistic community.

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

Could Rappers Face Jail Time Over Lyrics?

San Diego-based rapper Tiny Doo, whose real name is Brandon Duncan, faces prosecution on nine counts of alleged criminal street gang conspiracy, which collectively carry a sentence of 25 years to life in prison. The charges arise from a rash of shootings in California that were allegedly carried out in 2013 by the Lincoln Park gang, of which prosecutors allege Duncan is a member. Duncan does not have a criminal record, and prosecutors haven’t even suggested that Duncan pulled a trigger or was involved in any shootings. The charges against him are simply based upon rap lyrics that the district attorneys allege helped increase the Lincoln Park gang’s stature in the San Diego gang community.

California Penal Code § 182.5 makes it felony for any member of a criminal street gang to benefit in any way from the felonious conduct of any other gang member. Duncan’s album “No Safety,” which includes lyrics such as “ain’t no safety on this pistol I’m holding,” was released shortly before the shootings, and prosecutors now allege that receiving income from album sales and intangible benefits such as increased stature in the gang community somehow provide a basis to charge Duncan with felony conspiracy despite his lack of involvement in the shootings. According to Duncan, he’s just using rap lyrics to paint a picture of urban life. “The studio is my canvas. I’m just painting a picture,” he said in an interview with CNN.

In order for the government to win its case, it will have to prove that Duncan was actually a member of the Lincoln Park gang, that he knew about the gang’s involvement in criminal activities, and that he benefited in some way from the felonious activities of other gang members, whether or not he was directly involved. The most disturbing part of this whole case is that the prosecution’s efforts to turn Brandon Duncan, rapper, into Brandon Duncan, convicted felon, hinge on the state’s opinion that the “No Safety” lyrics were somehow connected to the criminal activities of the Lincoln Park gang. Had Duncan’s album been about sunshine and rainbows instead of urban street life, he’d be busy recording his next disc instead of facing nine counts of felony conspiracy in a criminal prosecution over song lyrics.

If it sounds to you like this law is at odds with the First Amendment right to freedom of speech, you’ve got a good point. While it is noble of the district attorney’s office to try to crack down on the glorification and glamorization of violent gang activity, the prosecutors in this case are sure to face a high Constitutional hurdle in their efforts to turn rap lyrics into a life sentence. In the meantime, rappers, lyricists and songwriters should keep a close eye on this case; with the criminalization of lyrics at stake, the outcome of Tiny Doo’s case could have a profound effect on the entire music industry.

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

A-List Artists Threaten YouTube With Billion-Dollar Lawsuit

Music industry juggernaut Irving Azoff, who manages music licensing for some of the biggest artists in the business, including Pharrell Williams, the Eagles, Van Halen, Steely Dan, and the late John Lennon, has threatened YouTube with a $1 billion copyright infringement lawsuit unless over 20,000 songs are taken down. Azoff says that the infringing content was created by about 40 of his artists, and that YouTube has made them available online without permission to do so.

Azoff’s threatened lawsuit is just the latest instance of artists beginning to resist the streaming culture that makes music available to consumers for little or no compensation. Recently, Taylor Swift elected to remove her entire catalog of songs from the popular streaming radio provider Spotify, citing the disparity in artist compensation between streaming media and purchasing music through conventional means, such as CD.

Indeed, Pharell Williams, one of the leading plaintiffs in Azoff’s threatened lawsuit, is a prime example of why the culture of streaming media has so outraged artists of late. Williams’s 2014 hit song “Happy” has garnered over 525,000,000 YouTube views, for which Azoff alleges no license was purchased. Pandora, another streaming radio station similar to Spotify and the most-used streaming service on the market, did compensate Williams—to the tune of $2,700 for 43,000,000 plays, or just $60 for every million plays.

While streaming services have allowed unknown artists that may never have been discovered to make their music available to the masses, artists at the very top of the industry, including those represented by Azoff, have taken a large revenue hit as a result of exceedingly low per-play royalties and widespread unlicensed streaming of their work.

Azoff has ordered YouTube to pull down 20,000 songs by about 40 of his artists in order to avoid $1 billion in copyright infringement liability. Google, who owns the online streaming video giant, appears ready to go to court rather than give in to Azoff’s request, stating that the allegations are “misguided.” Given the popularity of Azoff’s artists’ music and Google’s ostensible refusal to back down, this is shaping up to be the biggest music-industry legal showdown since the illegal file-sharing litigation of the Napster days. Expect this large-scale development to shed some much-needed light on artist compensation in the world of streaming media, and possibly a tempering of the expectation that music should be available for free.

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

Adventures in Licensing, Part II: It’s Not Just About Live Music

In an earlier article, we discussed the importance of getting a license from ASCAP, BMI, SESAC, or all three before presenting live music at your bar, restaurant, or other venue. Purchasing blanket licenses from one or all of those organizations allows you avoid harsh copyright infringement penalties. As we’ve seen, these penalties can find you no matter how far off the beaten path your restaurant is, how unknown the band is, or how unlikely you think it is that the  music being played at your bar will be surveyed.

But what about showing major sporting events, HBO, or Netflix at your bar or restaurant? Can you broadcast the World Series, the Super Bowl, or the Game of Thrones season premiere? Believe it or not, the United States Code provides for some exceptions to broadcasts that would otherwise constitute copyright infringement, allowing you to freely engage in showing some of those, provided certain conditions are met.

If you are receiving an over-the-air broadcast of a sporting event televised on a major network like Fox, for example, it is perfectly legal to show it at your bar or restaurant provided that (1) you don’t charge for admission; (2) your establishment is smaller than 3,750 square feet; (3) you have no more than four televisions showing the broadcast; and (4) none of those televisions is larger than 55 inches. Yes, the law actually specifies qualifying square footage and screen size!

Over-the-air broadcasts, however, are increasingly becoming things of the past. Most establishments now receive their network programming through cable, satellite, or online streaming subscriptions, in which case copyright infringement cannot be avoided without a proper license, regardless of how few televisions are showing the broadcast or how small the screens. Unfortunately, the typical contract with FiOS, Comcast, Netflix, Hulu, iTunes, and others don’t include the proper licenses required for commercial or non-personal viewing. For example, if you plan to draw a die-hard baseball crowd to your bar during Game 7 of the World Series, you can put the game on as long as the above criteria are met and you’re receiving an over-the-air broadcast signal. If you happen to be a cable or satellite subscriber and have not purchased the appropriate license, however, showing that very same ballgame could result in steep fines and a lawsuit brought against you by your provider.

But there’s good news: just like in circumstances where you might find yourself purchasing a blanket license from a performing rights organization to facilitate the performance of live music at your bar or restaurant, many broadcast media providers offer affordable licenses that will allow you to show the big game, the big fight, or the big season finale of your favorite show without the fear of racking up damages to the tune of $150,000 per violation. Verizon, Time Warner, DirecTV, and others all offer business-level packages containing enhanced licenses for precisely such a purpose. Like in the case of live music, the cost of a license is much, much less than the cost of defending just a single copyright infringement lawsuit, so if part of your business’s appeal derives from showing sports or TV, the safe bet is to buy the appropriate license.

Frank Gulino is an associate attorney with Washington, DC business law firm Berenzweig Leonard. He can be reached at FGulino@BerenzweigLaw.com.

Cautionary Tale: When Contemplating Live Music at Your Venue, Get a License

Last summer, a small band performed at a bar called 69 Taps in Medina, Ohio, near Cleveland. That evening, the band covered a number of popular songs that the mostly middle-aged audience had grown up listening to. The bar had not asked for a set list, nor had the band provided one. The band took requests, playing hits like “Brown Eyed Girl” and “Freebird” for a small audience. The problem? “Freebird” and nine other songs that the band covered that evening are protected by Broadcast Music, Inc. (“BMI”), a performing rights organization tasked with collecting royalties, and 69 Taps did not have a license to present music from BMI’s catalog.

 The bar was slammed with a lawsuit brought by BMI and the copyright holders of each of the ten covered songs, demanding that 69 Taps pay significant damages and attorneys’ fees. While it may seem harsh to sue a small-time bar for copyright infringement over an amateur cover band’s decision to take requests on a summer evening, this lawsuit is a testament to the fact that BMI (one of the “big three” American performing rights organizations along with ASCAP and SESAC) takes aggressive steps to protect the intellectual property of its artists. Because 69 Taps did not ask for a set list or post one on its website, BMI could only have found out about the performance of the infringing works through its survey process—by actually having a representative in the audience to keep tabs on the performance. Any venue that presents live music, no matter how small or obscure, should expect to be “surveyed” by the three performing rights organizations. 

The solution to avoiding these lawsuits is for venues to purchase a “blanket license.” For example, if 69 Taps had purchased BMI’s blanket license, it would have had unfettered permission to present any of the roughly 8.5 million songs in BMI’s catalog for a flat annual fee. BMI allocates shares of the licensing fee to the artists whose work is represented in the venue’s programming, as determined by the same survey methodologies that discovered 69 Taps’s unlicensed performances. The cost of the blanket license is much less than the cost of defending just one copyright infringement lawsuit, so if your business plans on offering live music, the safe bet is to purchase blanket licenses from all three major performing rights organizations. Otherwise, businesses may have to “face the music.”

Frank Gulino is an associate attorney with Washington, DC business law firm Berenzweig Leonard. He can be reached at FGulino@BerenzweigLaw.com.

Stairway to the Courthouse: Part II

Led Zeppelin, one of the most popular bands of all time, has lost its first court battle in the lawsuit over iconic megahit “Stairway to Heaven,” brought by the estate of guitarist Randy California and profiled in one of our earlier blog posts.

The lawsuit was filed in the U.S. District Court for the Eastern District of Pennsylvania by the trust of the late Randy California, a founding member of the band Spirit, and Spirit bassist Mark Andes, and alleges copyright infringement as well as “Falsification of Rock N’ Roll History.”

In 1968 and ‘69, Spirit and Led Zeppelin performed several concerts together that featured one of Spirit’s instrumental tracks, called “Taurus.” The lawsuit states that Stairway’s iconic introduction was lifted directly from Taurus, which Led Zeppelin heard while opening for Spirit on those concerts, and seeks monetary damages as well as a writing credit for California.

The Led Zeppelin members named as defendants moved to dismiss the suit on the grounds that they are all British and have no ties to Pennsylvania. The District Court judge, however, denied the band’s motion and has allowed the lawsuit to proceed. Under the so-called “effects” test, a district court can exercise personal jurisdiction over a non-resident defendant if the plaintiff felt the brunt of the harm there or if the defendants allegedly aimed their conduct there. In this instance, the fact that Stairway to Heaven is one of the best-selling, most profitable musical works of all time suggests that Led Zeppelin’s conduct in marketing, selling, and performing the song was essentially aimed at Pennsylvania, among other places, so the judge ruled that the case will remain in the Eastern District of Pennsylvania.

The cause of action for “Falsification of Rock N’ Roll History” will almost certainly be invalidated because, frankly, it’s both non-existent and completely ridiculous, but the plaintiffs here have won the first procedural battle and successfully thwarted Led Zeppelin’s efforts to have the case tossed on jurisdictional grounds. If nothing else, this development serves to show that musicians and entertainers are uniquely vulnerable to the “effects” test, and can be hailed into court in far off places simply by having successfully marketed and sold records there. We will continue to monitor the case as the battle against the legendary rock band continues.

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

Does Fictional Hacking Software Used by Catwoman in The Dark Knight Rises Infringe on a Real-Life Trademark?

The U.S. Court of Appeals for the 7th Circuit recently heard the appeal of a trademark infringement suit arising out of Christopher Nolan’s 2012 blockbuster film The Dark Knight Rises, the latest installment of films featuring Gotham City’s Caped Crusader known as Batman along with other characters from the DC Comics universe. One such character, Catwoman, is portrayed in The Dark Knight Rises as attempting to use sophisticated hacking software to erase evidence of her criminal past from every computer and database throughout the world. While the software depicted in the movie, referred to as “the clean slate,” is entirely fictional, one e-security company brought a trademark infringement suit against Warner Bros. Entertainment, Inc., alleging that sales of its real-life desktop restoration product called “Clean Slate” declined after audiences witnessed Catwoman using “the clean slate” for an improper purpose.

The case was dismissed by the District Court for the Northern District of Indiana, which was affirmed by the 7th Circuit on appeal. In trademark infringement suits, courts consider the likelihood of consumer confusion; that is, whether the improper use of a trademark would cause the reasonable consumer to believe that both the legitimate and infringing uses of the mark originated from the same producer. While the plaintiff did register “Clean Slate” as a trademark, the court in this case found that even “unusually gullible hypothetical consumers” could not reasonably believe that Warner Bros. was actually licensing a “diabolical hacking tool” in connection with The Dark Knight Rises. Additionally, the court noted that Warner Bros. doesn’t even manufacture or sell software, making it very unlikely that a consumer in this instance would identify real and fictional goods of the same name as having originated from the same source.

While the use of the fictional “clean slate” software may not have been sufficient to prevent the sly and wily Selina Kyle from assuming the Catwoman persona, it was more than enough to draw a trademark infringement suit directed at Warner Bros. Entertainment in what is just the most recent example of sophisticated parties bringing intellectual property issues to the forefront of entertainment law. Holy trademark, Batman!

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

To Sue, or Not to Sue: Strategic Responses to Intellectual Property Infringement

You’ve finally done it.  Your book has gone to press, the reviews are good, and your friends tell everyone who will listen that they know a published author.  You’re hard at work on the sequel when you get a call from your publisher’s legal department.  Someone has published the first five chapters of your book on their blog without permission, and legal wants to talk with you about a response.  Your first instinct is to hit them hard, threaten a lawsuit and get the content taken down ASAP.  But not so fast.  Legal has a few points they want to talk over with you before rushing into anything.

IP enforcement strategy can require a far more delicate touch than many people appreciate.  It is true that infringement is against the law, and that content owners have the right to go after infringers in order to put a stop to the unauthorized use of the owners’ material.  The question is, should they?  Anti-infringement actions can turn into PR nightmares in a heartbeat, even when the acting parties are entirely justified in going after the infringing parties.  In 1989, for instance, The Walt Disney Company drew national scorn after they forced a number of Florida daycare facilities to remove murals depicting Disney characters from the daycares’ walls.  Despite pleas from Florida officials and the children of the daycare facilities, Disney held firm.  “Frankly,” one Disney spokesman said, “we can’t understand why something so routine to Disney is such a big deal to these day-care centers.”

Herein lies the problem.  Many companies, especially those with valuable IP assets, make it a habit to move against infringers as quickly as possible.  Studies show that a reputation for vigorous IP enforcement actually deters would-be infringers, and in the trademark sphere, courts have held that a consistent failure to police one’s marks can throw a wrench into later enforcement actions.  Yet in many cases, content owners may find that an enforcement action may be more harmful than helpful.  In fact, the Supreme Court itself has recognized that in some cases, acts of infringement may actually benefit an IP owner.  Such acts can bring additional hype to the infringed work, for instance, or expose it to a different fan base.  The global phenomenon of “scanlation,” for instance ‒ whereby readers scan in images of their favorite mangas, translate the text, and make the works available online ‒ has arguably resulted in creation of a global paying audience for content that otherwise might never have left Japan.

Several companies have also seen major upswings in their public image after changing their stances on IP enforcement.  After years of being maligned for using litigation tactics that many considered to be little more than bullying, the Recording Industry Association of America received praise in 2008 when it decided to stop mass suits against individuals, particularly college students, accused of music piracy in favor of practical strategies and targeted suits against large-scale infringers.  More recently, Tesla Motors saw a surge in both its share price and public approval rating after it announced that, moving forward, it would “not initiate patent lawsuits against anyone who, in good faith, wants to use [their] technology.”  Alexander C. Kaufman of the Huffington Post also points out that Tesla’s new IP strategy is likely to make its supercharger model the industry norm, saving Tesla the trouble of having to create a whole infrastructure for electric automobiles on its own.

Reevaluation of asset management strategy is valuable to consider, and this goes double in the context of IP. Emotions run high when parties try to restrict access to art and knowledge, and in a world that is more and more accepting of “remix culture,” content owners can and should be thinking about changing their standard procedure when it comes to outsiders’ unauthorized use of IP.  Even Disney ‒ long considered to be chief of the IP police ‒ appears to be changing its tune.  To sue, or not to sue?  After careful consideration of the costs and benefits with regard to a given case, the answer might surprise you.

Ryen Rasmus is an associate attorney practicing in the Entertainment and Music Industry and Business Law and Litigation Groups of Berenzweig Leonard, LLP.  He can be reached at RRasmus@BerenzweigLaw.com.