Recent Blog Posts

Reality TV Copyright Infringement

Metal Law Group — Fri, 06 Jul 2012 20:44:00 GMT

Reality TV Copyright Infringement

How to Avoid a Copyright Infringement Claim Against Your Reality TV Show

Understanding how to avoid a copyright infringement claim first requires an understanding of how a claim is brought. The party making the claim must establish two elements:

(1) that the defendant had access to the plaintiff's work and

(2) that the two works are substantially similar.

To determine if works are substantially similar the Ninth Circuit, the Federal District Court of Appeals, has adopted a substantial similarity test. This test focuses on two things:

(1) Would the ordinary reasonable audience find the works substantially similar in their total concept and feel, and

(2) what are the actual similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.

Utilizing this knowledge can demonstrate how to avoid a copyright infringement claim against your reality show. For example, in the recent suit by CBS against ABC, where CBS claims ABC's new reality show, The Glass House, infringes on their copyright in Big Brother, the courts used these same rules and ultimately denied CBS's application to stop production of The Glass House. In addition, the court said CBS is unlikely to prevail at trial.

First the court looked at ABC's access to CBS's Big Brother. Since 26 members of The Glass House's production staff had worked on Big Brother there was no dispute on access. The court then looked at whether the works were substantially similar. First the court removed all elements that were not protected by copyright:

(1) number and placement of cameras used to record the activities of the cast;

(2) the fact that the video streams live on the web;

(3) the fact that contestants remain in the house for most of production;

(4) the timing and scope of post-production;

(5) the fact that post production does not edit the content;

(6) the fact that the shows commence airing prior to the last show being shot; and

(7) the size and positions of the production crew.

These elements are safe for any reality show to use and are uncopyrightable.

Next, the court moved onto the elements of Big Brother that may be entitled to protection. The court said that as a concept Big Brother does not exhibit original and concrete elements due to the fact there is no plot or characters until the cameras start to record. The plot ensues only from the drama of the interactions of the people locked in the house together. To avoid the risk of interactions becoming dull, the contestants are periodically given challenges that either reward or cost them certain privileges.

While there may be a setting, it is hardly a novel one. The court notes several other reality shows predating Big Brother, such as MTV's Real World, which have very similar looks and feel.

In the end the court says CBS is trying to copyright the format and template of a show rather than expressible concrete elements. So to clarify, in order to avoid copyright infringement of your reality show do not copy elements that are unique or original concrete elements of another particular show.

It can be argued that reality television as a genre may be to generic to warrant copyright protection but this does not mean that all reality shows are uncopyrightable. To illustrate, the Amazing Race's concept of teams racing around the world, for a cash prize, and having the last place team of each leg eliminated is more likely to be considered a concrete original element than the concept of Big Brother. While the contestant's interactions and reactions to the race may be unscripted the drama comes from the preplanned structure of the race and what the contestants will do on each leg. On the other hand, the drama and plot on Big Brother comes mostly from the interactions of just having the cast in close proximity, seeing what they do, and then occasionally having a random challenge to mix things up, as they avoid "eviction."

If you find yourself in a Reality TV Copyright Infringement case please contact METAL LAW Group today for assistance!

Email: info@metallawgroup.com

Call Now: (323) 289-2260

WebSite: http://www.metallawgroup.com

Contract Dispute

Metal Law Group — Thu, 28 Jun 2012 03:25:00 GMT

Contract Dispute

Napoleon Dynamite vs Fox Searchlight Pictures

When Hollywood gathers at the Sundance Film Festival every year, there is always hope a break out film will emerge. In 2004 that film was Napoleon Dynamite and Fox Searchlight came out on top of the bidding war. Made for just $400,000, the film grossed over $44 million in domestic sales. Today, the film's producers, Napoleon Pictures, have sued Fox Searchlight for $10 million for allegedly underreported royalties and improper revenue deductions. The contract dispute centers on the terms of the original deal, specifically home video royalties. Napoleon Pictures claims Fox Searchlight agreed to pay 31.66% of net profits for home video, but Fox has only been paying 10%.

Two main deal points from the original agreement have emerged for interpretation at trial. The first point at issue is whether Fox's definition of "Net Profits" was incorporated into the deal. Though the deal's term sheet references this definition, it is not specifically incorporated. Fox contends that the reference to "Net Profits" is sufficient to incorporate their definition and that the definition was provided to the producers by fax during negotiations. Napoleon disagrees, claiming "Net Profits" was not a negotiated definition nor did they see Fox's definition until after the term sheet was executed.

Second, the judge will also have to determine which party's interpretation of "high price product" is correct; that is, whether the 31% royalty rate in dispute applies to home video sales or simply rental sales. According to Fox's "Net Profits" definition, "high price sales" usually refer to rentals, whereas "sell-through sales" refer to video sales for purchase and have an associated 10% royalty. Napoleon, however, argues industry practice for video sales for purchase is 20%, no studio would offer a lower rate, and they would not have agreed to a lower rate.

Royalty disputes are often attributed to conflicting contract interpretations, such as in Wolf v. Superior Court in 2004. Under a 1983 agreement, Wolf, who wrote the novel that became the film "Who Framed Roger Rabbit," was to receive 5% of "gross receipts" from exploitation of the characters. "Gross receipts," however, much like the term "Net Profits" at issue in the Napoleon Dynamite dispute, was not defined in the agreement. Wolf put forth extrinsic evidence from an expert witness that "gross receipts," as used in the industry, referred to "money and all other valuable consideration received." Under this interpretation Wolf would have been entitled to compensation from some licensing agreements Disney had entered into that did not result in cash payments. Disney countered with a definition that ultimately prevailed over Wolf's; that "gross receipts" actually referred to only payments that could be monetized.

As in Wolf, both parties to the Napoleon Dynamite royalty dispute are seeking to bring in evidence from outside of the original contract and term sheet to support their interpretations of the disputed terms. Ultimately, which interpretation prevails will be determined by the judge, and at the very least will reinforce that parties should take greater care to ensure all terms are negotiated and clearly defined to avoid lawsuits.

If you find yourself in a Contract Dispute please contact METAL LAW Group today for assistance!

Email: info@metallawgroup.com

Call Now: (323) 289-2260

WebSite: http://www.metallawgroup.com

Software Copyright

Metal Law Group — Wed, 20 Jun 2012 19:43:00 GMT

SOFTWARE COPYRIGHT

Google Wins First Battle of the 'Smart Phone War'

In a ruling that may come to shape software copyright ability for years to come, presiding judge William Alsup, referred to this case as the "World Series of technology litigation." In one of the first cases in smart phone litigation the stakes concerned Google's Android smart phone operating system. In this round, Google is the victor.

In 2010 Oracle Corporation acquired Sun Microsystems, Inc., and Sun's interest in the programming language known as Java. Oracle then sued Google claiming Google's Android platform infringed on Oracle's Java-related copyrights and patents. The claim itself is not frivolous. Java and Android both include, "virtual machines" development and testing kits, and application programming interfaces (APIs). To simplify the case, Judge Alsup decided whether Oracle had a protectable copyright in its APIs, and the jury decided whether there was copyright infringement or if the fair use doctrine applied.

Oracle's software copyright claim concerned 37 packages of its Java application. Judge Alsup stated "so long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API." To determine whether or not the Android code infringed upon the Java code, Judge Alsup used the abstraction-filtration-comparison test adopted by the Second Circuit.

The test first takes the alleged infringed program and breaks it down into its structural parts (abstraction). It then removes all non-copyrightable materials (filtration), such as elements that are not identical or those in the public domain. What is left over is then compared. Using this test the court found four separate potentially protectable elements: 1. The names of the methods, classes and packages in the API; 2. The structure, sequence and organization of these elements; 3. The method specifications; and 4. The implementation of the methods.

After analyzing these potentially copyrightable elements Judge Alsup denied protection of the method specifications due to the merger doctrine. The merger doctrine is a rule in copyright law that says if there is but one way to express an idea than the expression of that idea is not copyrightable because it merges with the idea. This doctrine applies because in order for the Android API to function with the Java language the Android API had to be identical to the Java API. When there is only one way to express an idea or function then everyone is free to do so. Also, the names of the methods, classes, and package elements are not protected under copyright law because they are merely short phrases. On the other potentially protected elements, such as command structures, sequence, and organization, the court relied on Section 102(b) of the 1976 Copyright Act, which prohibits the protection of systems or methods of operation.

The order did not hold that the Java API packages were in the public domain nor approve their unlicensed use. It also did not conclude that the structure, sequence, and organization of all computer programs may be freely used. The order held only that Google in this software copyright case, replicated particular elements that are free for us all to use. However, that may change depending on whether this ruling survives the pending appeal.

If you need an experienced Software Copyright Attorney please contact METAL LAW Group today for any assistance in Software Copyright protection! info@metallawgroup.com

Book Publishing

Metal Law Group — Thu, 07 Jun 2012 20:26:00 GMT

Just two years ago in book publishing, Steve Jobs' biography reportedly fetched an advance of $50,000. Most recently, Amanda Knox, an American student who spent 4 years in Italian jail for the murder of her roommate until her conviction was overturned, signed a $4,000,000 book deal. Pippa Middleton, Penny Marshall (Fox News mole) and Samantha Shannon (first time author and Oxford student) all recently signed 6-figure book deals. Penny Marshall's advance for her memoir was $800,000. Why did Jobs' biography receive so much less? The book was Amazon's #1 bestseller for 2011, so clearly, not due to a lack of interest.

So what is the difference? Timing.

In the last two years, the publishing industry has undergone drastic changes and advances have sharply increased. The drastic changes have all come from the digitizing of the industry. E-books have changed the publishing landscape. The inventory-free e-book industry provides a much higher profit margin for the publishers, who can now afford to pay larger advances to authors.

When selling physical books, publishers incurred much higher production costs; printing, distribution, storage, etc. Now, most of those costs have been eliminated. Sure, publishers are still selling physical books, but their margins have become much higher due to the increase in their e-book business. E-books' market share has risen from 6% in 2010 to 24% in the mystery category, from 4% to 15% in the espionage category and from 5% to 15% in the romance category (which will undoubtedly increase for 2012 due to the renewed interest in romance thanks to the "50 Shades" trilogy). The "50 Shades" trilogy, an adult romance series that has seen unbelievable sales numbers in the last several weeks, has now sold 10,000,000 copies and accounted for 47% of paperback fiction sales in the last week of May. It has sold an astonishing 6 times more Kindle books than print books.

Only a couple of years ago when e-books were new, publishers did not pay an advance for e-book publishing and profits were split 50-50 with the author. However, with the rise in popularity of e-books, publishers have changed the payment structure. Now, the publisher receives 75% of profits and the writer 25%, but the author gets an advance. Because of the immense success of e-books, the publishing advance has become larger and larger. Furthermore, though it is still more difficult to succeed as a self-published writer, the ease and increase in popularity of that option has made traditional publishers become more competitive. 50 Shades of Grey started out as a self-published trilogy, which was later acquired for a 7-figure sum by Vintage Books.

Not only have e-books made book writing more lucrative but also book publishing has become easier. Getting a book deal is no longer reserved for career writers or celebrities. It is now open to other professionals who want to share their work with a larger audience and it has become more likely that a deal with a generous advance can be negotiated. In fact, a recent tweet quoted novelist Barbara Kingsolver saying, "The profession in which you are least likely to get a book contract: a writer."

Want more information on Book Publishing?

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Reality TV Copyright

Metal Law Group — Wed, 30 May 2012 18:22:00 GMT

Big Brother v. Life in a Glass House Law Suit: Challenging the Notion of Being Unable to Copyright an Idea

The first thing a student of Copyright Law learns is that you can only copyright the developed concept, not the idea. In an interesting recent case regarding Reality TV Copyright, however, CBS is challenging this rule in their lawsuit against ABC. In the suit, CBS claims that ABC's upcoming reality show Life in a Glass House is a "carbon copy" of their show Big Brother. On May 14, 2012 CBS asked the court for a preliminary injunction to stop development of ABC's new series before its scheduled June 18^th premiere. ABC has shot back at CBS arguing that their copyright infringement claim will fail because "CBS must realize it cannot copyright the idea of 14 contestants living in a house rigged with cameras."

Another fundamental rule of copyright law is that once an idea is made available to the public via media, such as through movies and television, it is not infringement to use that idea. Without this basic notion there would never be genre films like the hundreds of horror-slasher series that all have the same basic premise of teenagers being perused by a killer. CBS tries to side step this rule by claiming Life in a Glass House is a violation of trade secrets. This claim may have some merit as 19 of the production staffers of ABC's new series formerly worked on Big Brother. CBS argues that because of these 19 staffers, CBS 's "trade secrets are likely being disclosed on the production of Glass House every day."

This claim however, is likely to fail. As ABC points out, there is nothing secret about a show that has aired on CBS (and around the world via deals with Creator Endemol) since the year 2000. In addition, ABC points out that they haven't even finalized rules or constructed a set so to be considered a "carbon copy" is bit of a stretch. Furthermore, with the limited amount of work done on Life in a Glass House ABC was still able to point out substantial differences between the two shows. For example, on Big Brother the contestants are isolated from the world, it is an every-man-for-himself theme, and there is a host (Julie Chen). On Life in a Glass House contestants communicate with the outside world via social media, and engage in teamwork to compete. Also, there is no host for the show.

The question that remains is whether or not CBS can prevent ABC from airing Life as a Glass House. The answer is likely no but raises another question. Is a show in development an idea or a developed concept that can be protected by copyright law? To date, Courts have said "no" to the protection question when it comes to ideas for reality shows…but there is always that gray area of the law that remains unpredictable so stay tuned. One thing we can be sure of is there will be many more interesting cases regarding reality TV copyrights in the future!

Want more information on Reality TV and Copyright law? See attorny Richard Jefferson and his opinion on the same topic!! Reality TV Copyright Law

Or if you need Reality TV counsel Contact Us Today info@metallawgroup.com

Copyright Termination Rights

Metal Law Group — Mon, 21 May 2012 20:05:00 GMT

COPYRIGHT TERMINATION RIGHTS - Victor Willis, The Village People

Victor Willis, singer-songwriter of the Village People, is the first artist to prevail in court and solidify his right to recapture his copyrights to songs that he wrote in the late 1970's.

Willis notified Scorpio Music and Can't Stop Productions, the two companies who administered the publishing rights to 33 of the Village People's songs. The administrators fought back, not wanting to give up a portion of their rights to songs that make millions of dollars annually, claiming that Willis did not have the right to terminate their grant and as co-author, he could only terminate with his fellow co-authors. Willis moved for a motion to dismiss the administrators' claims. On Monday, May 7^th, 2012, California Judge Barry Ted Moskowitz rejected the administrator's claims and granted Willis's motion. Willis is now entitled to his share of royalties equivalent to the percentage he co-authored. This number will either be 33% or 50% as there is some dispute of the number of people who co-authored some of the Village People's songs.

Willis's position stems from a particular clause in the United States Copyright Act, enacted in 1978 that allows creative individuals who had granted their copyrights to third parties to terminate the transfer roughly 35 years later. This right is just now being asserted since 2013 is when such copyrights first become eligible. There are strict guidelines which copyright owners seeking to terminate rights must follow including: sending notice no more than 10 years, or less than 2 years, prior to termination, and acting on the termination within a five year window or forgo the ability to reclaim the copyright. Victor Willis complied with all of the requirements.

Beyond Willis, this victory has big implications for creative individuals, particularly for those who, early in their careers created music, film or other content, yet handed over their rights to record labels, production companies, and content providers due to naivety and unequal bargaining power. It is also likely to affect pending notices of termination filed by celebrities, such as Bob Dylan, Tom Waits, and Tom Petty who have already filed notices. The question that remains is whether this ruling will make copyright licensees more willing to accept the termination right or be more prepared and clever in litigation. Due to the profitability of the works involved, it is likely to be the latter.

Want more information on Copyright Termination Rights?

Check out this video by Attorney Jefferson:Copyright Termination Rights Video

Or if you need Copyright Termination Rights counsel Contact Us Today info@metallawgroup.com

A decoding of piracy 'take-down' notices

Metal Law Group — Tue, 28 Feb 2012 22:12:00 GMT

With all the talk about take-down notices, SOPA, PIPA and piracy issues, search engines and social networks are bound to be found asking themselves, “Which companies are most aggressively pursuing pirates?” It may not be, as many assume, the big studios like Warner Brothers, Universal, or Sony. According to an analysis of copyright complaints lodged with Twitter, Magnolia Pictures, a New York film distributor is responsible for a third of the take-down requests to the popular social media operation. The movie firm even contract out this work to a third party outfit, Web Sheriff, which sends take-down notices to companies like Twitter, file-sharing sites, fan forums and other sites where pirated material may lurk. Surprised? There also may be more to take-down notices than meets first glance:

As many companies know, there is a fine line between appearing too aggressive with take-downs and sound, business-like monitoring of pirated material. Further, deleting all material from the web may not prove to be the best marketing strategy as the best way to advertise a product, especially in this internet era, may be by word of mouth, or should we say by means of electrons and the masses.

So if a pirate or just a zealous fan posts a new favorite song as a YouTube link from a Twitter feed, should talent, counsel or companies aggressively seek to take that tune down?

The CEO of Rovio, maker of Angry Birds, the popular video and cell phone game, recently remarked how piracy can benefit copyright holders, arguing, “It can get us more business at the end of the day.” Legendary musician Neil Young echoed that point, explaining that piracy leads fans to discover new works and this eventually leads them to buy content from copyright holders. Comedian Louis CK recently showed how an innovative approach can work when he offered a stand-up special in a downloadable format, free of restrictions, directly to fans for $5 on his website. He reportedly made more than $1 million dollars in a few days.

Although many big studios work with third parties that take charge of firing off take-down notices, many social networking sites, such as Twitter and Facebook, have automated DMCA forms and procedures that companies can use to combat pirated material from being shared on the site. Facebook also has a counternotice form for appeals on take-down claims. A typical take-down notice from Twitter contains links to Tweets that in turn link to websites where pirated versions of copyrighted material is distributed. Attempting to locate the actual Tweet from the notice invariably leads to a Twitter.com note, saying, “Sorry, that page doesn’t exist!” Movies, music, footage of cricket matches and stolen photographs of an actress in states of undress have all inspired DMCA notices. Certain copyrighted material could be exempt under fair use – - for example, a short quotation from copyrighted material may legally be used, and use for purposes of satire or parody is also legally protected.

Perhaps the takedowns and pirate frenzy may be sending a different message. Many users feel that it is content providers’ inability to adapt quickly to changing revenue structures that promote web piracy. When Fred Wilson, a prominent New York venture capitalist who has backed Twitter and Zynga, wanted to watch the New York Knicks game last month, he found that Time Warner Cable was not showing the game because of a contract dispute. But like millions of Americans, he had access to the internet and in minutes was streaming the game illegally on his big-screen TV. “It’s not that we don’t want to pay for our sports entertainment,” Wilson stated, “But last night we were turned into ‘pirates,’ as the entertainment industry likes to call us.”

This online meme shows how frustrated users can turn to piracy when the show they want to watch is unavailable for free, instant viewing. In a world where internet-raised users expect instant gratification, many content providers have moved at a glacial pace with new technology. Major studios, including Warner Bros., Paramount Pictures, Universal Pictures and Sony Pictures, unveiled a studio-direct, streaming cloud service called UltraViolet late last year, hoping to get movies to viewers faster; consumers have yet to warm to this distribution channel.

February 24th, 2012 by Jasleen Ahuja, a METAL blogger

Film and TV Contracts

Metal Law Group — Tue, 14 Feb 2012 16:54:00 GMT

Film and TV Contracts

As Entertainment Attorneys we have always done are fair share of Film and TV contracts but this past year we have seen a big uptick in the amount of new projects and contracts related to film and television, primarily indie movie and reality tv productions. This is a dynamic space with new legal and contractual issues always cropping up, so in this blog post we will go over some issues and tips on what to keep an eye out for when it comes to film and television related contracts.

One of the most common contractual agreements when it comes to Film and Television are the initial Collaborative Agreements between the producers and other contributors.

A collaborative agreement is the very beginning of the process and is an agreement between partners that come together for the specific project. The idea is each partner will contribute agreed upon things, hoping to get agreed upon compensation as a result.
Before embarking on any new film or television projects it is very important that the agreed upon terms are down on paper.

Let's take a look at some of the most common parts of Collaborative Agreement.

o Agreement on ownership. Are potential earnings split 50/50? Does one person bring more to the project than others and therefore should get a higher percentage? These questions and details should be specified in the agreement.

o Management of the Project. This is where you should define the roles of each person. Is one person going to manage the project? What are the others roles? Will one person only be an investor and nothing more? Or will both parties have an equal say on how the projects managed? If both parties do have an equal say what happens if there is a disagreement? What steps will be done to break that impasse and come to a conclusion? What we at Metal Law normally do is put in a "Dead-Lock Clause" which ensures that there is a written agreement on how to resolve a situation of an impasse between partners of equal share. Maybe this is a mediation agreement or something similar but it is key to have some type of provision in place to make sure there does not come a point where a disagreement between equal partners puts the whole project at risk.

o Structure of the project. A lot of projects are simply a partnership between people but then you have liability issues, so a lot of projects are structured into limited liability companies or corporations. Deciding on how to structure depends on many factors including whether you have employees, investors, tax incentives and many other factors.

o Other issues to consider. What is each partner specifically contributing? What are each person's personal obligations to the project? What is each person's specific compensation on the project? How is each person going to be credited for the project? Are there any rights anyone is giving to the project? Maybe a contributor is the screenwriter and they are agreeing to allow the project to use their writings. Additionally there can be consideration for future projects. If this project is a success what can be agreed upon for the sequel? Will everyone be involved in the next related project if there is one or will it be a one off deal?

These are some of the issues that should be addressed before moving forward with your project.

Metal Law Group are Los Angeles Entertainment Attorneys who specialize in Media, Entertainment, Technology, Action-Sports and Lifestyles.

If you need expert advice on Film or TV contracts contact us today!

We can be contacted at info@metallawgroup.com

Phone Number: (323) 289-2260

For the video version of this post please click on the link below.

http://www.youtube.com/watch?v=JiRDQgTNRXg&list=UUNm-rP0SO9s5fiM0PS_rCzw&index=3&feature=plcp

Los Angeles Entertainment Attorney Dr. Dre Triumphs in Digital Suit

Metal Law Group — Fri, 29 Apr 2011 19:57:00 GMT

Written by Rosalind Read M.E.T.A.L. Law Group Legal Intern

Rap legend Andre Young, a.k.a. Dr.Dre, has emerged victorious from a federal lawsuit he filed over owed royalty payments in early 2010 against WIDEawake Death Row Entertainment LLC. U.S. District Judge Christina A Snyder in Los Angeles has ruled that the defendant breached Dre's contract by selling his music online, without his permission and contrary to their 1996 agreement; Dre, thus, is entitled to 100% of all digital sales from his classic 1992 album, “The Chronic.”

The defendant, Canadian-based WIDEawake Entertainment Group, had purchased at auction Death Row’s assets after it filed for Chapter 11 bankruptcy protection, reported the Los Angeles Times in January, 2009. Dre claimed that the company had breached the agreements by (1) failing to pay him royalties since 1996; (2) digitally distributing his album The Chronic without permission; and (3) and including his recordings in a compilation album entitled “Death Row’s Greatest Hits.”

In 1996, Dre and Death Row apparently had entered into a written agreement whereby he would relinquish his 50% ownership interest in the firm and assign all copyrights in his recordings. But those rights were assigned to the extent that the “master recordings shall only be distributed in the manners heretofore distributed” (i.e. not digital). In return, Death Row agreed to pay royalties to Dre from the sales of recordings he wrote, produced or on which he performed.

The defense asserted that, under California law, a contract claim based on a written agreement is subject to a four-year statute of limitations and therefore Dre’s suit was barred under Cal. Civ. Proc. Code § 337(1). Defendants argued that, even if they had repeatedly breached the 1996 agreement within the last four years, the statute of limitations barred Dre’s action because it was not brought within four years of March 2000 – the first time Death Row distributed The Chronic on the Internet via digital download. The court, instead, agreed with arguments by Dre’s attorney, Howard King.

“For years, Death Row Records forgot about Dre when they continued to distribute his music digitally and combined his hits with weaker Death Row tracks in an attempt to elevate the stature of their other artists,” King said in a statement, “[and we] are gratified that the federal court has unambiguously declared that Death Row has no right to engage in such tactics, and must hold all proceeds from these illicit distributions in trust for our client” reported online music magazine Gigwise.

Los Angeles Entertainment Attorneys Metal Law Group

Courtesy of Southwestern Law School, the Biederman Entertainment and Media Law Institute and the Biederman Blog.

The Legal Perspective of Branding: What You Need To Know About Brand Protection

Metal Law Group — Mon, 18 Apr 2011 20:56:00 GMT

“Branding” has become the buzzword in almost every industry. When consumers hear the word “brand” they typically relate it to traditional companies, product lines and services such as Pepsi, McDonalds, IBM, Apple, Mercedes, Ebay, Google, and AT&T, but recently the term has become more common when describing non-traditional commodities, such as the promotion of celebrity empires (i.e., Oprah, Donald Trump, Lady Gaga), entertainment series (i.e., American Idol, Survivor, The Apprentice), and other unique ventures (i.e., Black Ops or Halo Reach in the gaming industry). A brand represents a feeling or sensation evoked by seeing or hearing the name (or seeing the logo). Today, companies are spending the lion share of their annual budget on activities related to branding, such as campaigns that focus on brand awareness or brand integration, through advertisements, public relations, and marketing. It is safe to assume that a company’s brand is its most valuable asset and launched a growing niche for lawyers called brand protection.

Brand protection involves various areas of law, including contract law (licensing, sales, joint ventures, NDAs), business law (holding companies, asset protection strategies), copyright law (protecting creative designs in a logo), and, in the case of a person or estate that is a brand, constitutional law (first amendment vs. defamation) and right of publicity law may apply….but the foundation of protecting a brand is trademark law.

The Lanham Act (title 15, Chapter 22 of the United States Code for those who are interested) is the federal body of law that protects trademarks. A trademark is a word, symbol, phrase or other feature that identifies a particular producer’s good or service in the marketplace, such that they are distinguishable from the goods or services of others. There are myriad of issues that may need to be examined when determining the best strategy to obtain and maintain protection for your trademark, such as researching the existence of conflicting common law trademarks, deciding whether to submit an intent-to-use, supplemental, or principal application, or apply for a standard character or stylized trademark. Each issue can have an impact on the scope of your protection so make sure you retain an attorney who is well versed in trademark law to help you navigate through the issues. In the interest of keeping this blog concise, I will suggest that you discuss the details of trademark law and your brand protection strategy with your attorney, but I have compiled the following checklist, and a few tips, which can help you get started:

1. Register Your Trademark – If eligible, register your trademark with the United States Patent and Trademark Office (USPTO). This is evidence that you own the trademark that supports your brand throughout the United States, it can be used as the basis to obtain international protection, and it allows you to collect additional monetary damages in court if you have to sue someone who infringes on your rights.

*TIP: Hire an attorney to file your trademark. Trademark applications appear to be simple but if you fill out your application incorrectly then you forfeit certain strategies if issues arise.

2. Register Multiple Domain Names – Coordinate the timing of your trademark registration with capturing desired domain names so that you can avoid having to deal with an unscrupulous domain grabber who will undoubtedly demand a large fee to sell you a domain that contains your brand name. There is legal recourse against bad faith domain grabbers, such as using cybersquatting laws and UDRP procedures to force them to transfer the domain name to you, but those remedies can be costly.

*TIP: Consider registering “gripe” versions of your brand as well (i.e., ihatebrand.com or brandsucks.com). Many times you cannot enforce your trademark rights against an owner of a “gripe” site because of a doctrine called “fair use”, which allows for criticism of a person or company, so you might as well just own these domains to prevent the problem.

3. U.S. Customs & Border Protection – the CBP maintains a trademark recordation system for marks registered with the USPTO. Record your trademark with them if your brand is associated with a good. This will help prevent the importation of illegal goods that bear your brand name.

4. Take Proactive Measures. It is very important that you take proactive measures to avoid weakening your rights in your brand. You should periodically monitor your industry to make sure there are no “confusingly similar” brands emerging. If you do find one, then you need to immediately send correspondence, such as a cease and desist letter, takedown notice, or letter challenging unfair keyword advertising. In the case of a person or estate brand, if a threat to his or her reputation arises, a prompt response needs to be sent. Failure to take proactive measures could inadvertently dilute or cause abandonment of your rights.

*TIP: Unless it looks like someone is blatantly infringing on your brand, it is usually more cost effective to first attempt to settle your dispute amicable. Legal remedies are costly to pursue and usually the end result is a settlement anyway (but with a large legal bill).

5. Legal Remedies. When all else fails, there are always legal remedies. If applicable, it is less expensive than litigation to initiate a proceeding with the Trademark Trial Appeals Board (TTAB), such as an opposition to an existing trademark application or a cancellation proceeding if someone registered a confusingly similar mark with the USPTO despite the fact that you used your brand prior to its existence. As a last resort, a federal lawsuit for trademark infringement (and likely other related causes of action) is always an option for a legitimate claim, but this can get expensive quick.

The purpose of building your brand is to reap the benefits that a successful brand brings, such as licensing, extension, sponsorships, and endorsements opportunities. Properly protecting your investment will ensure that you will realize the fruits of your labor.

Richard B. Jefferson, Esq. (richardjefferson@metallawgroup.com) is General Partner at M.E.T.A.L. ^® Law Group, LLP, located in Los Angeles, California ( www.metallawgroup.com). The firm focuses on shaping small and medium-sized businesses to prosper in the fields of media, entertainment, technology, action sports and life style brands.

Ruling puts the big squeeze on LimeWire

Metal Law Group — Tue, 12 Apr 2011 00:05:00 GMT

Written by Rosalind Read M.E.T.A.L. Law Group Legal Intern

In a victory for the Recording Industry Association of America and artists, U.S. District Judge Kimba Wood has ruled in New York that LimeWire LLC and its CEO were liable for inducing the infringement of more than 10,000 sound recordings, declaring those materials were owned by major labels including UMG Recordings Inc. and Sony Music Entertainment Inc. DigiDayDailyreports that LimeWire is the largest remaining commercial P2P service and has not followed other such enterprises that negotiated licenses or discontinued their service after the Supreme Court decision in MGM v. Grokster.

In Grokster, the high court ruled in 2005 that providers of software designed to enable "file-sharing" of copyrighted works may be held liable for the infringement occurring due to its use. The justices held that "one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties."

According to Law.com, the record industry trade group and the 13 record companies suing LimeWire for copyright infringement demanded damages ranging from $400 billion to $75 trillion, claiming that Section 504(c)(1) of the Copyright Act allows them to request damages for each instance of infringement where two or more parties were liable; the trade group. in other words, argued for damages not only for the individual works but for every instance in which that work was infringed (downloaded by a user).

Judge Wood ruled that this extreme argument on statutory damages was "absurd" and offending to the "canon that we should avoid endorsing statutory interpretations that would lead to absurd results." Instead, she ruled that the most plausible interpretation of 504(c) authorizes only a single statutory damage award per work against LimeWire, regardless of how many users infringed it.

Mitch Bainwol, who heads the industry group, labeled the court's decision as "an important milestone in the creative community's fight to reclaim the Internet as a platform for legitimate commerce. By finding LimeWire's CEO personally liable, in addition to his company, the court has sent a clear signal to those who think they can devise and profit from a piracy scheme that will escape accountability."

On the LimeWire site, the company has posted notice that is under court order to stop distributing its software along with a copy of the injunction ordering it to do so.

Courtesy of Southwestern Law School, the Biederman Entertainment and Media Law Institute and the Biederman Blog.

iPad App Channels New Fury for Time Warner

Metal Law Group — Mon, 04 Apr 2011 16:00:00 GMT

Written by Rosalind Read M.E.T.A.L. Law Group Legal Intern

With all the technological innovations affecting the entertainment industry, two things, it seems, inevitably occur: (1) new means for presentation of media crop up and (2) litigation, fueled by a desire to cash in and derive profits from the new innovations, is spearheaded by angry interests whose stake in the status quo has changed, usually to their detriment.

And so the latest situation plays out: When Time Warner Cable, without securing permission or initiating discussion over contract modification, released an iPad app as the first of its kind to stream channels that cable-service provider carry on traditional TV, the television industry bristled in fury. The owners of MTV, Discovery Channel, Food Network and the like slammed the nation's second largest cable company for its recently launched app, gripping that they're owed compensation for the 32 Time Warner channels streamed to viewers on the iPad.

Media companies like Viacom and Scripps Networks screamed contract breach and threats of legal action from several studios followed. According to the Wall Street Journal, the major point of contention is the contrasting interpretations of provisions within the tightly

negotiated- and loooong-agreements between media companies and cable operators. Several TV executives say their contracts specifically delineate rights for "cable television."

Nat Worden, of Dow Jones Newswire pointed out that Scripps Networks Interactive Inc. asserted it "had not granted iPad video streaming rights to any distributor and is actively addressing any misunderstandings on this issue."

Melinda Witmer, a Time Warner executive vice president, said in an interview last week that she thought this dispute was "fundamentally about money and leverage," not about the language of contracts, The New York Times reported. "I already bought these rights," she said.

Blogger Tim McElgunn wrote that under existing distribution and advertising revenue agreements, Time Warner argues that it is can legally deliver programming to any device as long as it is restricted to paying subscribers who get the channels as part of their TV package and the distribution is limited to within the household. Time Warner also is providing the app and the service for free to those customers, so it is not receiving new revenue for the iPad capability.

Adding to the fury, Cablevision is expected release its own app to give viewers even more access toevery existing channel and video-on-demand option in their cable packages. This will further aggrieve channel owners who face yet another issue of concern resulting from this innovation: counting their audiences. Apparently, there has been a "stampede" of channel owners asking the Nielsen Company to include iPad streaming in its ratings of programs.

In response to the dilemma, on Monday afternoon Time Warner launched an online campaign aimed at swaying public opinion regarding its free iPad app at www.iwantmytwcabletvapp.com.

Courtesy of Southwestern Law School and the Biederman Entertainment and Media Law Institute

DC Case Ricochets into Big Mess for Cable Giant

Metal Law Group — Fri, 01 Apr 2011 22:02:00 GMT

Witten by Rosalind Read, M.E.T.A.L. Law Group Legal Intern

A federal judge in Washington, in a mass-litigation matter tied to online file-sharing, has issued a controversial decision that casts a cable giant into what it terms a big, onerous situation. This case concerns three film production companies, Call of the Wild Movie LLC, Maverick Entertainment Group Inc. and Donkeyball Movie. They filed separate complaints targeting thousands of individuals, who, the firms say, illegally traded copyrighted movies on BitTorrent. According to TorrentFreak, U.S. District Judge Beryl Howell, in her ruling, essentially brushed off procedural objections, jurisdictional concerns and First Amendment arguments, allowing the companies to pursue what some have termed “mass-suing” of individuals it calls pirates.

Time Warner found itself caught between the plaintiffs and thousands of anonymous Internet customers when the companies demanded names and information on users from the cable giant and net service provider.

In her opinion, Howell states: “Time Warner claims that the subpoenas issued to it in each of the three cases should be quashed due to the undue burden that Time Warner faces with compliance. Alternatively, Time Warner argues that the subpoenas should be substantially modified to require production of the requested information on a schedule that would likely take about three years. All are cases in which copyright owners of separate movies allege that their copyrights are being infringed in the same manner. Specifically, the plaintiffs allege that varying numbers of defendants, who are currently unnamed, are illegally downloading and distributing copyrighted works using a file-sharing protocol called BitTorrent.”

As a result of the decision, Time Warner will have to comply with expanded subpoena requests. The judge even extended the original per-month limit agreed to by Time Warner and the plaintiffs, opening up subpoena requests beyond a 28 IP address limit mutually agreed upon by the parties in the dispute, reported Nate Anderson for Ars Technica. The cable giant now will be swamped, to say the least, with thousands of subpoena requests, as Howell wrote, “the Court in each case granted plaintiffs leave to subpoena Internet Service Providers (ISPs) to compel production of the names, addresses, emails, phone numbers, and Media Access Control numbers associated with the alleged infringing IP addresses that the plaintiffs identified as engaging in infringing distribution of their respective movies. File-sharers are engaged in expressive activity, on some level, when they share files on BitTorrent, and their First Amendment rights must be considered.” Howell also said the “First Amendment right to anonymity in this context does not shield them from allegations of copyright infringement.”

To add to the complexity of this case, critics have taken note that Howell has received $105,000 from a recording industry group for lobbying work against file sharing when a lawyer at Stroz Friedberg LLC.

Courtesy of Southwestern Law School and the Biederman Entertainment and Media Law Institute

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