Court Clarifies Scope of Injunction in "Commodores" Band Name Dispute

Commodores Entertainment v. McClary, No. 14-cv-1335 (M.D. Fla. Nov. 15, 2016).

The Defendant's post-injunction actions triggered a motion by the Plaintiff clarifying the scope of the injunction, and the Court found that the Revised Band Name (COMMODORES’ Founder Thomas McClary” or “COMMODORES’ founder Thomas McClary") improperly suggested a sponsorship or endorsement by Plaintiff.  The revised band name not only placed “Commodores” before the historical reference,  but also emphasized it by writing it entirely in capital letters.  "Such placement and prominence, in combination with the overlapping audiences for the two bands, at minimum, suggests endorsement and, thus, continues to cause a likelihood of confusion between the two bands."  However, the Court found that Defendant could use Plaintiff’s Marks in a historically accurate manner so long as: (1) Plaintiff’s Marks are preceded by the historically accurate reference; and (2) the Marks are not more prominent than other words contained in the band name.  "For instance, Mr. McClary’s band name could be 'Thomas McClary original founding member of the Commodores' or 'Thomas McClary formerly of the Commodores.'” 

Cruz Campaign Can't Avoid Copyright Infringement & Contract Claims

Leopona, Inc. et al. v. Cruz for President, No. 00658-2016 (W.D. Wash. July 11, 2016).

In a case involving former presidential candidate Ted Cruz's use of two licensed songs in YouTube videos supporting his campaign, the Court denied Cruz's motion to dismiss the plaintiffs' copyright infringement and breach of contract claims.  The breach of contract claim, which included a $25,000 liquidated damages provision, arose out of a license agreement that restricted use of the licensed song for political purposes.  The court held that the licensor's claim was not pre-empted by section 301 of the Copyright Act because the licensor was not the copyright owner (it was a distribution and licensing service), and the actual copyright owners (the song's authors) had not brought breach of contract claims -- they had brought only copyright infringement claims.  Lastly, on the claim for an injunction, the Court held that it was not moot due to suspension of the Cruz campaign because the YouTube videos were still available online.

Third-Party Service Provider Subject To "Grooveshark" Injunction

Arista Records, LLC v. Tkach, No. 15-CV-3701 (AJN), 2015 BL 182234 (S.D.N.Y. June 03, 2015).

A third-party service provider is bound by and subject to the TRO and preliminary injunction in the Grooveshark case, finds Judge Nathan in the Southern District of New York.  The Court concluded that CloudFlare wasin active concert or participation with the Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the authoritative domain name server for the new Grooveshark sites, which connects users entering the Grooveshark domain names into a web browser to the specific IP address associated with that site; (2) CloudFlare provides other services designed to improve the performance of the new Grooveshark sites; and (3) CloudFlare began providing its services to after it acknowledged receipt of the TRO.  Furthermore, for the purpose of determining whether CloudFlare is in active concert or participation with the Defendants, it is not determinative that CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare was bound by the TRO and is now bound by the existing preliminary injunction.

Limited Permanent Injunction Entered In Beastie Boys v. Monster Case

Beastie Boys v. Monster Energy, No. 12-cv-06065 (S.D.N.Y. filed 02/20/15) [Doc. 201].

After prevailing at trial, the Court granted the Beastie Boys' motion for a permanent injunction, but agreed with Monster that the injunction "must be tightly limited to cover only the infringing video."  The Beastie Boys had sought to broadly enjoin Monster from using the Beastie Boys' music, voices, names, and trademarks for any advertising or trade-related purpose, whereas Monster argued that, if the Court decided to issue a permanent injunction at all, that relief should be limited to the video at issue in the case.  The Court applied the traditional four-factor test in exercising its equitable discretion to grant such relief, and found that "In the Court's view, the injunction the Beastie Boys propose is highly overbroad. It would sweep well beyond the single video at issue in this lawsuit to expansively ban a host of hypothetical future acts that the Beastie Boys cast as infringement."

Injunction Entered On Use Of Platters Band Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. June 17, 2014).

The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance.  First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS.  There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants.  Second, the court found a likelihood of confusion under the 9th Circuit test.  Accordingly, a permanent injunction was appropriate.  Damages were also awarded for both domestic and foreign profits.

Platters Injunction

Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., No. 2:12-cv-00560 (D. Nev. July 24, 2012) [Doc. 43].

In this case, the assignee of founding band member Herb Reed asks the Court to tell Defendants – who promote an unlicensed show featuring a group called The Platters – that “It Isn't Right.”  The Court granted Plaintiff's motion for a preliminary injunction enjoining defendants and their agents from use of the mark “The Platters,” and any equivalent or phonetically similar names or marks, in connection with any vocal group in any advertisements, promotional marketing, or other materials, with two narrow exceptions.  First, Defendants could use the mark “The Platters” in connection with the names that included the words "tribute to" or "salute to" the Platters.  Second, defendants could use the mark “The Platters” in any other manner with Plaintiff's permission.

Judge Reduces TM Jury Verdict Award To Hendrix

Experience Hendrix, LLC v., Ltd. et al., No. 2:09-cv-00285 (W.D. Wash. filed Sep. 21, 2011) [Doc. 160].

Plaintiffs own various tradmarks incorporating Jimi Hendrix's name, image, signature, song titles and/or lyrics. Defendants used one or more of these federally registered markes on products bearing Hendrix's image or art he created. The case proceeded to trial on three issues: damages for trademark infringement, defendants' liability for violation of Washington's Consumer Protection Act, and upon a finding of liability, actual damages for the consumer protection violation. After trial, the jury deliberated and rendered a verdict in favor of plaintiffs awarding, on the infringement claim, actual damages of $306,650 and defendants' profits of $60,000.

The Court concluded that the evidence, when construed in the light most favorable to plaintiffs, permitted only one reasonable conclusion, which was contrary to the jury's verdict concerning lost profits. "Having entirely failed to carry their burden proving expenses, plaintiffs are not entitled, as a matter of law, to an award of lost profits."

The Court further concluded that the jury's awards for injury to reputation and injury to goodwill were contrary to the Court's instructions and unsupported by the evidence.

The Court denied plaintiffs' motion for attorney fees under the Lanham Act in light of defendants' overall success and lack of bad faith. However, Plaintiffs were entitled to attorneys fees under the state consumer protection claim -- which the Court limited to $50,000 (or 10% of the amount requested by Plaintiffs).

Lastly, the Court entered a limited permanent injunction.

'Beat It' to Promotor's Claims Against Jackson Estate

Allgood Entertainment, Inc. v. Dileo Entertainment Entertainment & Touring, Inc., et al., No. 09 Civ. 5377 (S.D.N.Y. opinion & order June 29, 2010).

"This case is about whether or not Michael Jackson, through his alleged manager Frank Dileo, agreed to perform a concert with the plaintiffs, AllGood Entertainment, Inc. and AllGood Concerts, LLC, and then later reneged on this agreement in order to perform a different concert with the defendants Anshutz Entertainment Group, AEG Live, LLC, and AEG Live NY, LLC. Plaintiffs allege breach of contract, promissory estoppel, and fraud by Frank Dileo and his management company, Dileo Entertainment and Touring, Inc., and allege tortious interference of contract on the part of Anshutz Entertainment Group and the other AEG entities; Plaintiffs also seek a permanent injunction. Both sets of defendants have moved to dismiss for failure to state a claim. For the reasons below, the tortious interference, fraud, and permanent injunction claims are DISMISSED."

PI Denied in Record Label Trademark Suit

Medici Classics Productions LLC v. Medici Group LLC, No. 07-cv-09938, 12/30/08 NYLJ "Decision of Interest" (S.D.N.Y. Dec. 19, 2008).

Micro-boutique record label denied preliminary injunction - claimed trademark infringement against classical music recording label over use of MEDICI mark. Analysis under each of the Polaroid factors.

Plaintiff Medici Classics Productions LLC (MCP) was created in 2003. After lapse of 2004 registration, its "Medici Classics" trademark was issued on Jan. 2, 2008. Since 2003 MCP sold 494 copies of five CD recordings, and 335 copies of two DVD performances, by its principal for $7,000. Defendant Medici Group produces CDs, DVDs and other media relative to a broad range of classical music by renowned artists. Its "Medici Arts" and "Medici Masters" marked recordings are distributed in the United States by Naxos of America Inc. The court denied MCP a preliminary injunction barring Naxos and Medici Group's alleged infringement of trademark, finding MCP's "Medici Classics" mark weak. Discussing the Polaroid factors, the court found that plaintiff showed little likelihood of confusion. MCP's marks were the weaker due to minimal promotion and sales. The possibility of confusion was further decreased by the sophistication of buyers who were capable of distinguishing between the parties' distinct logos.

[Summary by New York Law Journal]

Aerosmith Singer Sues Bloggers

More blogger news this week:

Article --

Aerosmith singer Steven Tyler sued unknown bloggers who allegedly impersonated him on the internet, writing about "intimate details" of his life. The suit accuses the bloggers of public disclosure of private facts, making false statements and misappropriation of likeness. It also seeks an injunction to have the defendants stop impersonating him online or elsewhere.

50 Cent's Girlfriend - Not Evicted (Yet)

Rapper 50-Cent's Girlfriend Granted Interim Stay of Eviction From Home

Tompkins v. Jackson, No. 102255-2006, 6/11/08 N.Y.L.J. "Decision of Interest" (Sup.Ct., N.Y. Co. decided May 14, 2008):

This court adopts the view that unmarried cohabitants may lawfully contract concerning their financial and other matters relevant to their relationship, subject to the rules of contract law, except where sexual services constitute the only consideration for the agreement [cit. om.]. Therefore, the complaint alleges sufficient services rendered by the plaintiff, which are non-sexual in nature and separable from the parties' relationship, such that a breach of contract claim in this regard supports plaintiff's request for an interim stay.

The court also found that the imposition of a constructive trust concerning the parties house in Dix Hills (NY), a partition of same, an accounting, quantum meruit for services performed, and damages for unjust enrichment were sufficiently plead in Plaintiff's complaint to warrant preliminary injunctive relief.

'Imagine' State Court Update

Despite Judge Stein (SDNY) denying Plaintiffs' motion for a preliminary injunction on fair use grounds, let us not forget that a related case is pending in New York State court (based on pre-'72 recordings).
Reviewing the papers filed in the state court action reveal that Defendants moved to dismiss the complaint under CPLR 3211. A hearing was requested for June 9, 2008 (9:30AM) in the Motion Submission Part, Room 130, located at 60 Centre Street, New York, New York 10007.

What consideration will the Honorable Richard B. Lowe give to the federal order and decision? How does Judge Stein's decision affect the state proceeding?

Judge Stein Promises Quick Ruling in 'Imagine' Case

From the tipster wire:

"A judge has promised a fast decision in a lawsuit brought by Yoko Ono to get the song "Imagine'' taken out of a movie challenging the concept of Darwinian evolution after a lawyer for the film's distributors warned the litigation could wreck the movie's political message."


Would an injunction "muzzle" the film producer's free speech? They argue that the film is asking if John Lennon was right, and concludes he was wrong. "Why would you ask somebody for permission to criticize their work?'' their attorney asked. "It's not likely it's going to be granted.''

Lennon's attorney responded: "fair use is not about destroying the other person's market. It's about carving very, very limited exceptions to a copyright proprietor's monopoly.''

So, readers - is it FAIR USE?

Notably, Judge Stein only required plaintiffs post a $20,000 bond to cover any losses suffered by the film's producers as a result of an injunction. What standard to judges apply to determine potential damages resulting from a wrongful preliminary injunction in setting the bond?

Lennon - Complaint

Below is the complaint in Lennon et al. v. Premise Media Corp., L.P. et al., No. 08-cv-3813-SHS (S.D.N.Y. filed April 22, 2008). A couple highlights:

Paragraph 20 - noting the influence of Internet bloggers

Paragraph 23 - alleging that the defendants obtained synch licenses to use other songs in the film. Does this implicate bad-faith or willfulness? If Defendants' affirmative defense is Fair Use, there is split authority on whether bad-faith precludes a fair use defense. Judge Leval (and others) argue that a defendant's bad faith has no place in fair use analysis.

Paragraph 25 - end credits list Imagine, but do not state that permission was granted. Again, how does this implicate bad-faith or willfulness? Fair use?

Paragraph 36 - seeks permanent injunction and damages on copyright claim

THIRD CLAIM - is based on The Lanham Act sec. 43(a), infringement of unregistered mark. Does Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) foreclose this claim? Dastar holds that the section 43(a) does not apply to claims arising out of a failure to attribute or credit the origin of creative work; rather, such claims are cognizable under the Copyright Act. Are Plaintiffs making such a claim? See Contractual Obligation Productions LLC v. AMC Networks Inc., No. 04-cv-2867, 4/7/08 N.Y.L.J. "Decision of Interest" (S.D.N.Y. March 25, 2008). It appears that rather than alleging that Defendants are failing to credit the origin of Imagine, Plaintiffs' claim is a sponsorship claim.

Exhibits A & B - Noticeably absent is an SR registration. Imagine is a Pre-72 work; thus, Plaintiffs include publishers of the song, but not a record label. However, state common law copyright may protect Pre-72 recordings - why do Plaintiffs omit a common law claim from their complaint?

Read this doc on Scribd: Lennon v Premise Media Corp COMPLAINT

Fair Use? - 'Imagine' Suit Over Documentary

John Lennon's heirs - Sean, Julian, and Yoko Ono - and his publisher (EMI Blackwood) brought suit in the S.D.N.Y. against the filmmakers behind "Expelled: No Intelligence Allowed" for using John Lennon's "Imagine" in the film without authorization. Plaintiffs seek an injunction and damages.

In response to the suit, defendants cited fair use. "We are disappointed therefore that Yoko Ono and others have decided to challenge our free speech right to comment on the song 'Imagine' in our documentary film," they said in a statement.

Readers: any thoughts on fair use?

[Details on case to follow when available...]

Fuego Agrees to Restraint

Fuego Entertainment has agreed not to release recordings purportedly made during Ringo Starr's first performance with the Beatles until the suit is resolved.

"This is an injunction that was agreed to by our clients with no admission of liability to give the court time to consider the parties' claims regarding the ownership interests in these recordings," Feugo's attorney said.

Apple countered, "[this] clearly reflects that there is no basis for Fuego's claims that they have a right to exploit the tapes."

[Background here.]

Another Day at the Races

Yesterday (1/22/08) was another busy day for the major record labels, with the filing in various federal courts of nineteen (19) copyright infringement actions against P2P users identified by their IP-addresses. Under these cookie-cutter complaints, plaintiffs seek injunctions, statutory damages under the Copyright Act, and legal fees.

At a quick glance, the number of alleged infringements range from approximately 400 recordings to nearly 2,000, and appear to all have occurred in 2007.

What is remarkable is that in each of the courts -- e.g., California Eastern District, Florida Middle District, Georgia Northern District -- the complaints are virtually identical!

With regards to the P2P portion, each had this to say:

Much of the unlawful distribution of copyrighted sound recordings over the
Internet occurs via "peer-to-peer" ("P2P") file copying networks or so-called
online media distribution systems. P2P networks, at least in their most
popular form, refer to computer systems or processes that enable Internet users
to search for files (including audio recordings) store on other users' computers
and transfer exact copies of files from one computer to another via the
Internet, which can include both downloading an exact copy of that file onto the
user's own computer and distributing an exact copy of that file to other
Internet users on the same P2P network. P2P networks enable users who
otherwise would have no connection with, or knowledge of, each other to provide
a sophisticated search mechanism by which users can locate these files for
downloading and to reproduce and distribute files off of their personal

Users of P2P networks who distribute files over a network can be identified
by using Internet Protocol ("IP") addresses because the unique IP address of the
computer offering the files for distribution can be captured by another user
during a search or a file transfer. Users of P2P networks can be
identified by their IP addresses because each computer or network device (such
as a router) that connects to a P2P network must have a unique IP address within
the Internet to deliver files from one computer or network device to
another. Two computers cannot effectively function if they are connected
to the Internet with the same IP address at the same time.

California Eastern District:
BMG Music et al v. Espinoza; case 1:2008 00040

UMG Recordings, Inc. et al v. Higareda; case 1:2008 00039
Sony BMG Music Entertainment; case 1:2008 00041
Sony BMG Music Entertainment et al v. Evans; case 1:2008 cv 00109
Warner Bros. Records Inc. et al v. Kukendall; case 2008 00043
BMG Music et al v. Espinoza; case 1:2008 00044

Florida Middle District:
Priority Records LLC et al v. Hayes; case 3:2008cv00079

Georgia Middle District:
Zomba Recording LLC, a Delaware limited liability company et al v. Hughes; case 7:2008cv00012
Atlantic Recording Corporation et al v. Helmburg; case 5:2008cv00015

Georgia Southern District:
UMG Recordings, Inc. et al v. Emerson; case 4:2008cv00013
Mass. District:
Sony BMG Music Entertainment et al v. Crespo; case 1:2008cv10093
UMG Recordings, Inc. et al v. Saucier; case 4:2008cv40007
UMG Recordings, Inc. et al v. Straw; case 1:2008cv10092

Tennessee Middle District:
UMG Recordings, Inc. et al v. Adkins; case 3:2008cv00056
Capitol Records, Inc. et al v. Barbiere; case 3:2008cv00055
Warner Bros. Records Inc. et al v. Williams; case 3:2008cv00053
BMG Music et al v. Sharpe; case 3:2008cv00054
UMG Recordings, Inc. et al v. Farris; case 2:2008cv02027

Tennessee Eastern District:
UMG Recordings, Inc et al v. Bush; case 4:2008cv00007]