Monthly Archives: January 2012

Garth Brooks wins Suit Against Hospital Who Failed to Name Hospital After his Mother

An Oklahoma hospital that failed to build a women’s health center in honor of Garth Brooks’ late mother must pay the superstar singer $1 million, so sayeth a jury of Oklahoma country music fans.

Last night, the Oklahoma jury found in favor of Garth and decided that that the hospital must return Brooks’ $500,000 donation as well as pay him an additional $500,000 in punitive damages. The decision came in Brooks’ breach-of-contract lawsuit against Integris Canadian Valley Regional Hospital in Yukon, Oklahoma, which is, incidentally, located on Garth Brooks Blvd. It was Garth’s position that he’d reached a deal with the Hospital’s president for the “naming rights” of the new health center in exchange for his 2005 donation. After taking the donation, the Hospital wanted to use the money for other construction projects. Garth sued and, in a move that can only be described as “ill-advised,” the Hospital let this case go to a jury.

I freely admit I don’t know anything about the legal specifics of this case and I would be curious to know if punitive damages are in fact available for breach of contract claims in Oklahoma. However, regardless of the strength of its legal claims, the Hospital should have resolved this mess before throwing it in the lap of the Honkey-Tonk Bar Association.  Everybody knows that Garth has Friends in Low Places and that an Oklahoma jury is going to find in favor of one of its favorite sons, especially when he’s donated big money to honor his late momma and especially when his country music star wife (the fabulous Trisha Yearwood) is sitting by him in the courtroom. And, while $1,000,000 (plus its own attorney fees) is certainly a lot of money, I bet the bigger cost is the damage to the Hospital’s brand. The Hospital comes off as an untrustworthy welcher in a case that has (unsurprisingly) recieved national attention. How many folks are going to be willing to make substantial donations to them at this point? While I guess it’s possible that Garth refused to settle this case and, as plaintiff, that would be his right, the Hospital should have sat down with Garth over a few Long-neck Bottles and worked this out. I bet Garth is presently on a beach somewhere with Trisha, yodeling out an “I told you so,” with Two Pina Coladas, one for each hand. After all, this isn’t his first Rodeo.

Tennessee Senators Alexander and Corker Signal Willingness to Back Off SOPA/PIPA as Currently Written

Edit | Settings | Delete
Picture

In case you’ve been living in a cave, parts of the Internet went radio silent yesterday in protest of SOPA ( the “Stop On-Line Piracy Act”). Google “censored” its own logo and Wikipedia went down completely as expressions of these Internet giants’ opposition to the bill.  Due to all the brouhaha, U.S.  Senators from Tennessee, Bob Corker and Lamar Alexander issued statements on Wednesday that basically cried “uncle” and indicated that they are open to revising the controversial anti-piracy legislation that touched off the blackout and Internet firestorm. The two Tennessee Republicans are cosponsors of the Protect IP Act (“PIPA”)(the House version of the bill is SOPA), which would prevent US Internet users from accessing foreign-based rogue websites that illegally copy or show films, recordings, and other intellectual property.

The SOPA and PIPA bills would try to snuff out these overseas piracy sites by exerting leverage on companies doing business in the United States that would be subject to US jurisdiction. For example, the acts would force American ISPs to block the domain names (for example, “piracy.com”) of overseas piracy sites. They’d allow the government to sue American sites like Google and Facebook, and even blogs, to remove links to the piracy sites. And they’d give the government the right to cut off the piracy sites’ funding, such as forcing American payment companies (like PayPal) and advertisers to cut off the foreign accounts. Most of the opposition stems from fears that the ISP’s would be subject to liability for accidentally hosting pirated content or legitimate sites could be taken down by mistake without sufficient due process and their only recourse would be expensive litigation after their business has been destroyed by an improper take-down.

The protest has had its desired effect. The bill’s sponsors are backing off the legislation in its current form. Although Corker is a sponsor of the Senate bill, “he has always understood that there remained issues to be resolved before Protect IP was ready to become law,” said his chief of staff, Todd Womack.

“Though the bill being considered will likely not come to a vote in its current form, he hopes ongoing negotiations result in legislation that also stops foreign websites dedicated to stealing and profiting off the intellectual property of Americans, protects free speech, and fosters commerce and innovation on the Internet,” Womack said.

Alexander issued a similar statement.

“I am a cosponsor of the Protect IP Act because it will protect the rights of musicians, artists, and others from illegal foreign websites dedicated to copyright infringement,” the senator said. “I look forward to improving the bill to address legitimate concerns raised about it.”

Because Tennessee is home to the “Third Coast,” and “Music City,” Tennessee legislators are understandably supportive of measures to protect the IP of its many musicians, artists and film makers. Hopefully Senators Alexander and Corker will be able to fashion legislation that will take into account the concerns of the bills’ opponents, while still discouraging and punishing the infringers, counterfeiters, and pirates. It will be interesting to see what happens next. Many people are proposing alternative approaches. But for now, SOPA, at least in its current form, is as dead as Wikipedia was yesterday afternoon when I needed a quick and dirty survey of Anti-Slapp legislation.

The Velvet Underground vs. The Andy Warhol Foundation – Be Careful What You Wish For

Picture

The Andy Warhol Banana Image and the iPad cover licensed by the Foundation
The Velvet Underground ( an iconic rock group from the 1960’s for those of you who have never lived in a world without MTV) has filed a trademark and unfair competition lawsuit in Manhattan federal court against the Andy Warhol Foundation for the Visual Arts stemming from the Foundation’s use of the iconic banana image that was on the cover of the Velvet Underground’s 1967 debut album, The Velvet Underground and Nico. Band leaders Lou Reed and John Cale take the position that the foundation has illegally licensed the image for use on various products, including iPad cases. Cale and Reed allege that the foundation is trying to “deceive the public” into believing that the band, “VU,” has given its “sponsorship or approval” to this merchandise.The complaint seeks damages for trademark infringement and unfair competition and makes this statement to support its unfair competition claims: “Inasmuch as the Warhol Foundation has such a large number of Andy Warhol designs, all of which are presumably unique works that are highly valued in the marketplace, there would appear to be no economic need to include the banana design among the designs that defendant licenses.” In other words, since there are a lot of other Warhol designs the Foundation could choose to commercialize, the fact that it selected this particular one proves that the defendant is trading on the goodwill of the Velvet Underground.

Andy Warhol did more than paint Campbell soup cans and hang out with Edie Sedgwick during the 1960’s. He was also serving as the Velvet Underground’s manager and producer, and he created the famous banana logo – which includes the phrase “peel slowly and see” – from an advertisement taken from the public domain. Warhol was paid part of the band’s label advance for the design but never registered the image with the US Copyright Office. While this could theoretically mean that Warhol and now the Foundation have common law copyrights in the design, the Complaint denies that this is the case. The Velvet Underground says the Warhol Foundation lost any claim to the image by repeatedly publishing it without a copyright notice.

“The Warhol Foundation has sought to justify its unlawful licensing activities involving the mark by asserting that it has a copyright interest in the banana design, despite the incontrovertible fact that the banana design, insofar as copyright rights are concerned, is in the public domain,” the complaint states. “The banana design was first published in 1967, and continuously and repeatedly afterwards, without any copyright notice, and neither Andy Warhol, the Warhol Foundation, nor anyone else, has applied for registration of any copyright or deposited any sample of the work with the Copyright Office. Under the applicable copyright law – which is the Copyright Act in effect from July 1, 1909 through December 31, 1977 (the ‘1909 Act’) – such publication without a copyright notice irrevocably placed the banana design in the public domain, if it was not there already.”

In addition to seeking unspecified damages, the Plaintiff wants a declaratory judgment that the Foundation has no copyright in the Warhol image.

As far as I can tell, the Velvet Underground never obtained a federal trademark registration for the cover and the Complaint does not allege that they have. If that’s the case, they only have common law trademark rights. While you can certainly still sue under the Lanham Act without a registration, I have always believed that judges and juries are bound to wonder, “if this mark is so valuable, why didn’t you register it?” In other words, it makes it hard to convince folks that there is irreparable harm happening, in my humble opinion. Regardless of whether there is or is not a registration, the VU is going to have to establish that there is a likelihood of confusion with its marks and the usage the Foundation is making, i.e., on iPad covers. The complaint alleges that the VU mark has been used in connection with live musical performances, vodka, and VU merchandise. Consequently, I’m not sure how the VU is going to establish that it has rights that extend into the arena of iPad covers. Are consumers likely to believe that iPads emanate from the same source as live musical performances and vodka?  I would think not.

If the design is in the public domain, as the plaintiff alleges, can’t anyone use it on goods to which the plaintiff’s common law trademark does not extend? While I think the Velvet Underground will likely be able to establish trademark usage and secondary meaning in the album cover, I don’t think they are going to be able to extend it as far as they want it to go. If this is the case, it may be a mistake to seek a declaration that the Warhol banana design is in the public domain. If the plaintiff receives a holding that the image is in the public domain, then anyone would be able to use it on any product that would not be likely to be confused with live musical performances, vodka, and VU. At least if they are only fighting the Warhol Foundation, they know they are dealing with a reputable outfit that is likely to only license the mark on “appropriate” goods. And, the foundation would have the motive and means to police copyright infringements of it. If I were the VU, I would shudder to think what products this public domain “banana” with the possibly suggestive slogan “peel slowly and see” could be applied to in the event it is determined to be in the public domain and how much in legal fees it would take to constantly address that. Hey, people need something to sell on all those new .XXX domains.

The case is The Velvet Underground v. The Andy Warhol Foundation for the Visual Arts, 12-0201, U.S. District Court, Southern District of New York (Manhattan).

Copyrights and Copy Cats – A Paper Jam in Area B Is Not The Worst Thing That Can Happen To You

A publisher that sells educational materials has accused the Toledo Public School System of intentionally and willfully violating its copyright by either encouraging or allowing teachers to copy its training guides–supposedly verbatim–by transcribing them onto the school system’s computers then distributing thousands of them among the system’s teachers.

Align, Assess, Achieve LLC (“AAA”) sued the Toledo Ohio Public School System in Columbus Federal Court last Friday. AAA says the school district bought 10 copies of books in its series, Common Core: Clarifying Expectations for Teachers and Students, “apparently for the sole purpose of stealing and widely distributing the materials by having TPS teachers illegally transcribe these materials.”

AAA says that the books were sold pursuant to a license agreement, under which the school district was explicitly limited to using one “pacing guide” from the series for each kindergarten, first grade, and second grade math and English teacher. Despite these restrictions, the AAA determined in August of 2011 that the school system was not abiding by the license and, instead, “had engaged in massive infringement of the AAA copyrighted works.”

The complaint alleges as follows:  “Unbeknownst to AAA, TPS had engaged its teachers over the summer to take AAA copyrighted works and transcribe them – word for word – into electronic word processing documents. On information and belief, this massive copying of the AAA copyrighted works required numerous hours on behalf of TPS teachers and was done without any authorization by or knowledge of AAA.”

Obviously, these are merely allegations at this point. The school system has not had the chance to respond yet. However, this situation points out the need for everyone in your organization to understand the parameters of copyright and “fair use,” or, to put it another way, what you can copy and what you can’t. First rule of thumb: if it comes with a license, read the license and comply with it. If in doubt, don’t copy it. Second rule of thumb: if the license is unclear or there is no license, ask for permission before you copy. Don’t copy the work unless you have written permission to do so. Don’t assume that you can copy someone else’s work if you give them credit for it unless they have given you written permission to do so. In other words, giving attribution is not a defense to copyright infringement. Third, you may be able to copy portions of a copyrighted work (and in some rare cases, the whole work), assuming your copying would constitute fair use under the Copyright Act.

Generally, to qualify as fair use, you must be using the work for purposes of commentary, criticism, news reporting, and scholarly reports. While using portions of copyrighted works for educational use can sometimes qualify as fair use, the wholesale copying described in this complaint likely will not cut it, particularly when it destroys the commercial market for the product being sold. Despite what your brother-in-law told you, it is not true that the copying will automatically qualify as fair use if you use less than a certain percentage of the work or a specific number of words, or a certain number of musical notes–at least not under US law.  Whether a particular use qualifies as fair use depends on all the circumstances and, ultimately, can only be definitively decided by a federal court. I would encourage you and the entire Toledo School System to check out The U.S. Copyright Office’s Circular 21Reproductions of Copyrighted Works by Educators and Librarians. In addition, you can review this previous post for the big picture rules of fair use. While nobody wants to waste time reinventing the wheel, it sure beats being sued by an angry publisher seeking statutory damages and attorney fees in Ohio federal court.

New York Times and Huffington Post Reach Motherlode of a Settlement of Blog Dispute – Who Owns Your Blog?

The New York Times and the Huffington Post don’t seem to like each other very much. This particular dispute arose when well-known parenting blogger Lisa Belkin left the New York Time’s Motherlode blog and started writing a new blog for the Huffington Post called “Parentlode.” The Times sued for trademark infringement in New York district court back in November, stating:

“In drawing attention to the purported relationship between the blogs and offering the Parentlode blog as a continuation of NYTCo’s Motherlode blog, Ms. Belkin clearly intended to create an association in the minds of readers between the two competing blogs and, further, her reference to the ‘new name’ was a deliberate attempt to mislead readers into mistakenly believing it was the same blog, albeit with a slightly different name and location.”

The Huffington Post didn’t help matters when the tagged Ms. Belkin’s posts “Motherlode.” I think this case raises some interesting points. Does announcing a “new name” for the blog indicate that this is the same blog that used to be over at the Times but now it simply has a new home base? Are readers confused into believing that the two blogs are the same thing, just in a new location? Do people read blogs because of the newspaper or website that hosts them or because they enjoy the personal writing style and insights of the poster? We’ll never know how the New York district court would have come out on this or even what the parties ultimately decided among themselves because the parties have reached a confidential settlement. We do know that in a recent blog post, Ms Belkin got in some digs:

“Things can get petty and prickly in the sandbox. Sometimes there’s that kid who throws the sand around, and won’t share toys, and picks fights instead of playing nicely.

What is a parent to do?

Well, you can fight back, but the end result will probably just be more thrown sand. Or you can take your child by the hand, smile benignly at the bully, then go off to the ice cream shop and have a delightful afternoon.

Make mine chocolate chip.”

She went on to announce that the Huffington Post was launching a contest to rename the blog and the winner will receive a trip to New York, lunch with Arianna Huffington, and, “to show there were no hard feelings,”  a year’s digital subscription to the New York Times.

We will likely see more of these sorts of cases in the unstable journalism world, where new reporters are encouraged to “brand themselves” because they don’t know how long the paper they currently work for will survive. The BBC addressed a similar issue when a popular reporter left and took 60,000 Twitter followers to a new employer. Much like the Phonedog Twitter ownership case that everyone is talking about now, this case points out the necessity of making sure everyone involved in a creative endeavor knows who owns what. If a blog, Twitter account, Facebook page, or fill-in-the-blank is work-related, the employer needs clear policies and employment contracts that state in plain language that the account is the intellectual property of the employer so there is no controversy later. Conversely, if an individual employee blogs to “brand” herself, she should bargain on the front-end for ownership of the blog so that it is clearly portable if she later changes jobs. This simple step can mean the difference between spending countless days at your lawyer’s office rather than going “off to the ice cream shop and having a delightful afternoon.” Make mine jamocoa almond fudge.

Bits and Bytes

The Seven Habits of Spectacularly Unsuccessful Executives – Forbes

Amen to this. Why Best Buy is Going out of Business…Gradually – Forbes

iDoneThis helps you build better habits in the new year by connecting you with others who have the same goals.

How to Live a Creative Life – Martin Scorsese.

Richard Prince Lawsuit Focuses on Limits of Appropriation and Fair Use, via The New York Times.

Why 2012 will be year of the artist-entrepreneur.

Copyright and the 1st Amendment – How do they work together?

How Universities Fail Women Inventors – Businessweek.

This excellent post on Mashable.com was written by this blog’s friend and first guest star, Brian Wassom. 5 Predictions for Social Media Law in 2012.

This blog is honored to be mentioned in same breath with these women: Tip of The Tiara to Influential Women In Music 2012. Thanks, Janet!

Did the New Year sneak up on you? Watch my firm’s (Bass, Berry & Sims) New Year’s wish for you. See if you can spot me in the video. Hint: it was a curly hair day. And Happy New Year!

Trademark Poll: Do You Agree?

Does “Charbucks” dilute “Starbucks”? Answer: No. when all was said and done, Starbucks was unable to prove that there was a substantial likelihood that the “Mister Charbucks” mark would dilute the “Starbucks” mark by blurring. After looking at these pictures, it’s hard to believe this dispute has stretched out for more than 14 years.

Does the use of a rhino head on handguns unfairly compete with the use of a rhino head on “gentlemen’s clubs”? Answer: No. The adult entertainment field and the manufacture of handguns are “vastly different” areas and the strip club owner couldn’t show any incidents of actual confusion or that “any reasonable consumer” was likely to be confused.

Does digitally adding recognizable pictures of the plaintiff’s furniture to an empty room in a TV show amount to trademark infringement? Answer: No. The plaintiff failed to allege or prove that the defendants competed in furniture design or marketing or that any member of the public would believe that the allegedly infringed  furniture pieces were designed or offered by defendants.