Friday, June 16, 2017

Protecting Band Trademark Rights: Three Cases

Did you ever wonder how long dormant groups like the Beatles or ABBA can continue to protect all of their trademark rights?  No?  Well I do.  I have had this issue come up on more than one occasion and I think that we have three groups to thank when it comes to protecting bands' legacies and trademark rights:  the Kingsmen, the Drifters and the Platters.  All three groups have been involved in litigation regarding the use of their band names in the live performance class.  It appears that so long as a band's recordings continue to be commercially available then the members of the band, or the owner of the trademark rights to the band's name can continue to protect these rights.  This can be important  when trying ti stop “fake” groups or trying to resolve disputes between present and former band members regarding the right to use a same.

The court in Kingsmen v. K-Tel International Ltd makes this important point:

            Moreover the fact that these individuals continue to receive royalties for Kingsmen recordings flies in the face of any suggestion of intent to abandon the use of the name Kingsmen.  These plaintiffs have no more abandoned their right to protect the name of the Kingsmen than have   the Beatles, the Supremes or any other group that has disbanded or ceased performing and recording but continues to collect royalties for the sale of previously recorded material.  We must reject defendant's contention that the name Kingsmen has been abandoned to the public domain. 

The Kingsmen case has been relied upon with approval by Judge Samuel Alito in the case Marshak v. Treadwell, et al.  Judge Alito cited the above-referenced section and stated that "a successful musical group does not abandon its mark unless there is proof that the owner has ceased to commercially exploit the mark's secondary meaning in the music industry."  In that case the court noted that the proof of non‑use would be that the recordings of the "Drifters" were not played and the resulting royalties were not paid.  In another case Herb Reed Enterprises v. Florida Entertainment Management, Inc. the court stated that "although non‑use of the mark for three consecutive years constitutes prima facie evidence of abandonment, the standard for non‑use is high.  Non‑use requires "complete cessation or discontinuance of trademark use" where "use" signifies any use in commerce and includes "the placement of a mark on goods sold or transported" . Even  a single instance of use is sufficient against a claim of abandonment of a mark, if such use is made in good faith.

This important distinction has also been discussed in the treatise Gilson on Trademarks.  Ann Gilson La Londe writes about the above cited cases:  "three cases involving disbanded musical groups found that where the groups' recordings are sold and played and group members continue to receive royalties the marks continue to be commercially exploited and thus there is no time of non‑use". 

These cases provide some real guidance in working with artists who want to make sure that their trademarks are  protected past their days of active performing.

Tuesday, April 25, 2017

Robot Lawyers

One of my lawyer friends recently wrote a somewhat unsettling  post about re-reasing Asimov and the coming of our robot overlords and it reminded me of reading an interesting article in the New York Times dealing with technology, artificial intelligence and law practices.  The subtitle was "I, Robot, Esq.? Not Just Yet".  The article, written by Steve Lohr contained some fascinating insights.

            For example one study shows that the adoption of automation could result in a reduction of 13 percent of lawyers' billable hours over the next several years.  Another study shows that nearly half of all tasks performed by lawyers could in fact be performed by robots.  Anecdotal reports show impressive results from using artificial intelligence in both legal research and in drafting legal memorandum. 

            All of this made me think how much the practice of law has changed in the three decades I have been at it.  When I started, legal research meant spending hours in the library (something I actually  enjoy) and word processing seemed to require massive technological skills.  Today it is shocking how much information can be accessed instantly via Google and other search engines and perhaps more importantly, how much we rely on these services.

            It is daunting for lawyers to consider this information while at the same time dealing with competition from automated services like Legal Zoom and Rocket Lawyer which have created competition in the areas such as estate planning and corporate formation.  I also read this week that legal fields such as personal injury are expected to decline as auto makers continue to make safer vehicles (artificial intelligence again). 

            It occurs to me that all lawyers  should embrace new technology the same way that large firms have begun to embrace technology for things such as document review and e‑discovery.  It cuts down the cost of delivering legal services.  However, when clients have problems, they want things from an attorney that a robot cannot provide, at least not yet.  The article identifies four particularly human  areas:  strategy, creativity, judgment and empathy.  I might add "communication" to the list but as anyone who has ever shared a joke with Siri or Alexis might attest, maybe that too can be outsourced to artificial intelligence.

Tuesday, March 7, 2017

Sir Paul Sues Sony/ATV

Fake news.  That is my characterization of most news stories that report on entertainment and copyright litigation.  Witness the reporting of Paul McCartney's recent lawsuit against music publisher Sony/ATV.  It was reported that McCartney had sued Sony/ATV to recover the copyrights to his Beatles era compensations.

            Paul McCartney did not need to sue anyone to recover his U.S. copyrights.  Section 304(c) of the Copyright Act gives McCartney the right to terminate the assignment of these copyrights after (a mere) 56 years (these songs were all created prior to January 1, 1978; there is a different section that applies to post 1978 copyrights).

            The story of how Sony/ATV ended up with these copyrights to most of the Lennon/McCartney catalog has been detailed elsewhere. Beginning in October 2008, McCartney began serving termination notices on Sony/ATV and according to the complaint, the terminations will begin vesting in October 2018.  Sony has acknowledged that these terminations are valid.  The purpose of McCartney's lawsuit is to seek a declaratory judgment that not only are the terminations valid but that the terminations themselves do not give rise to a breach of contract claim against McCartney by the publisher.

            This may seem somewhat odd since it is well settled that the Copyright Act gives authors the right to terminate assignments of copyright despite any prior agreement to the contrary.  The problem is that this is U.S. law.  There is no corresponding British law.  Last year, when the member of the band Duran Duran attempted to terminate the U.S. assignment of copyright to their works, Sony's affiliate in the United Kingdom sued the band for breach of contract.  The court in that case ruled in favor of Sony/ATV.  This sounds crazy but the court found that Duran Duran did not present expert evidence of U.S. law so the British court did not take U.S. law into consideration.  It seems as if the Duran Duran decision should ultimately be remedied but if it is not, this does put songwriters like McCartney in an untenable position.  How can they exercise their statutory rights in one country only to be sued for breach of contract in another country?  For this reason, McCartney may be taking a stand for similarly situated creators ( i.e. British songwriters who signed UK publishing deals and had success in America) asking the U.S. court to rule that the exercise of his termination rights does not represent a breach of his publishing agreement and/or that the agreements cannot be enforced against him to the extent that they interfere with the exercise of his termination rights.  The unspoken third claim of this declaratory judgment is most likely:  take that Michael Jackson.

            It will be interesting to see how this plays out