right of publicity

Updates on Prince Estate - Heirs Determined; UMG Deal Voided; Possible Dispute Over Prince Stage Show

#createprotect Attorney Tamera Bennett Prince Estate stop Purple Rain Tribute Band

What Happens Now that Prince's Heirs Are Determined?

More than a year after Prince's death, the court certified Prince's heirs as his sister and five, half siblings. Under Minnesota law, half siblings are treated equally with full siblings for inheritance purposes.

The first action of the heirs seems to be challenging deals made by the trustee managing the estate for the past year. News reports state all six heirs agreed in 2016 that the estate administrator was rushing to sign deals for Prince's "vault" of songs and masters when their didn't seem to be a reason to push a deal through. A deal was made with UMG in January 2017 that was worth $31 million. Now there's a discrepancy between what rights UMG actually acquired under the deal signed as opposed to rights currently claimed by Warner Bros in the catalog.

In July 2017, the court voided the deal with UMG and now $31 million should be returned to UMG. Hopefully that money is still held in trust. But what about any commissions the trustees may have earned? 

Can Prince's Heirs Block A Stage Production About Prince?

Is it a musical or a cover band? That's the first legal question I think the heirs need to ask regarding the "A Celebration of Prince Purple Rain" tour that launches in August in the UK. An article from the BBC says the heirs are exploring legal options in regards to the tour.

Do tribute bands trigger "grand rights"?

Under U.S. law and U.K. law, theatrical grand rights require a public performance license to use music in stage/theatrical production. Those rights are fully negotiable and can be withheld by the copyright owner. These are different rights from the small rights that would be secured in order to present a concert. Small rights are much harder to deny so long as the necessary public performance licenses are secured. In the U.S., the small rights are licensed from ASCAP, BMI, and SESAC. In the U.K., PRS for Music is the public performance licensing agent.

If the tour is actually a "musical," then the tour could be shut down if the proper grand rights licenses are not secured from the music publisher. A concert starts to look more like a musical or theatrical stage production when the songs are used as part of the arc of a story line. If the songs are used for dramatic purposes to carry the story forward, grand rights are triggered.

Do tribute bands infringe trademark rights or right of publicity?

What are the options if this is a "tribute band"? I went to see a Journey tribute band earlier this summer and rocked out to the great hits. I had no illusion or confusion that I was going to see the real members of Journey. The name of the cover band didn't even mention Journey. There was a small tag line in the advertising materials saying the group was a tribute band. 

A small tag line is very different from how the Prince "tribute band" is advertising their shows. The purple website, the dove, and the words "purple rain" on the website could all be used to confuse a consumer that somehow this is an authorized tour. This case might come down to less of an issue of copyright infringement, but more of an issue of trademark infringement and unfair competition.  There's also a question of infringing on Prince's right of publicity. In accordance with Minnesota state law, the right of publicity will survive after death.  In the U.S., all of the factors mentioned could potentially weigh in favor of Prince's estate.

I'm not an expert on U.K. law regarding trademarks and unfair competition so I asked my colleague Claire Freeman with Dummett Copp to share her thoughts on the law in the U.K.

“We don’t have personality rights or unfair competition laws in the U.K. Prince’s estate will need to rely on the U.K. laws of passing off and/or trade mark infringement.  For an action under passing off to succeed, the estate must show that fans are mistakenly under the impression that the production has been endorsed by Prince’s estate.  Their chances of success will depend on the court’s assessment of the facts of the case and in particular on the way in which Prince’s name is being used."

Claire went on to say, "In June of this year, Prince’s record company, NPG Records Inc, filed both a U.K. and European trade mark application for the mark PURPLE RAIN presumably in order to try and help them win this legal battle.”

Here's a link to some other interesting tribute band litigation.

Music, Estates, Taxes and the IRS - Latest On Michael Jackson and Prince

music estates taxas irs #michaeljackson #prince #createprotect music lawyer tamera benentt dallas texas

The Value of Michael Jackson's Right of Publicity

What's the value of a name? That is the question the IRS is asking in a dispute over the post-death value of Michael Jackson's name and likeness.  Under California law, where Michael Jackson resided at the time of his death in 2009, his right of publicity lasts for 70 years after his death. That means his estate can continue to make money from licensing the rights to use Michael Jackson's name, likeness, and voice.

The IRS Court will need to determine the value of Jackson's right of publicity at the date of his death.  The rub is that the family says the value was almost zero at the date of his death because Jackson was taking minimal steps to promote his name and likeness. Post-death, the family ramped up efforts to maximize revenues and did a great job promoting and licensing the name and likeness rights of Jackson. The IRS claims they are entitled to the increase in value, not just the purported value at death.  The asserted value at death was $2,105. The IRS claims the value is closer to $434 million.

The valuation does not take into account revenues from song or sound recording copyrights owned or licensed by Jackson.

Hindsight might be 20/20.  Music attorney Tamera Bennett was interviewed in 2009 on the value of the Jackson estate and stated, "Michael Jackson’s most valuable asset is his name and likeness, ie, his right of publicity. This right is descendible under California law. For estate tax purposes the value of his right of publicity is speculated to exceed the liquid assets of his estate."

Prince's Estate Tax Payment Could Have Been Reduced

Prince died in April 2016 without a will, trust, or other estate or tax planning documents in place. In a worst case scenario, Prince’s estate is subject to a federal tax of 40 percent and Minnesota’s state tax of 16 percent. In January 2017, Prince's estate had to make its first estate tax payment to the IRS. It's estimated the estate will owe $100 million in taxes.

Like the Jackson estate, the Prince estate is working to maximize revenues from the music assets. Deals were struck to have Prince's music catalog available on all major streaming services in February. Most likely a choice Prince would have personally hated based on the limited streaming deals he did during his lifetime. Additionally, Universal acquired rights to Prince's "vault" of back catalog recordings that have not been released.

Music attorney Tamera Bennett discussed the Prince estate issue with KRLD radio news manager Mitch Carr in the days following Prince's death. You can listen to the interview by clicking here.

Texas Music Lawyer Tamera Bennett Interviewed On Prince Estate Issues

Lesson Learned From Prince Make an Estate Plan attorney Tamera Bennett interviewed on KRLD. #princerip #rightofpublicity #estateplan #copyright

Dallas copyright and music attorney Tamera H. Bennett was interviewed today by KRLD Radio News Anchor Mitch Carr regarding what happens now to the assets in Prince's estate.

The death of music icon Prince shook the music world . . . but it's also causing headlines in the legal world. Prince's sister Teeka Nelson has gone to court to ask that someone be named to take over her brother's multimillion-dollar estate . . . and says there is NO WILL.

Click the arrow below to hear Mitch Carr and Tamera Bennett's conversation recorded on April 27, 2016.

Transcript of interview with Texas Music Lawyer Tamera Bennett on Prince Estate:

Mitch Carr -- The death of music icon Prince shook the music world . . . but it's also causing headlines in the legal world. Prince's sister Tyka Nelson has gone to court to ask that someone be named to take over her brother's multimillion-dollar estate . . . and says there is NO WILL.

Tamera Bennett -- So two different things were talking about.  Dying intestate means he died without a will.  

Mitch Carr -- Okay.

Tamera Bennett -- So he didn't have a written document saying this is how I wish for my assets to be disbursed upon my death.  So he dies intestate which means the state of Minnesota, just like every other state, has statutes that say who will get what upon his death.  It will go to his siblings.  And, under Minnesota law his half-siblings are treated as equal to his -- I believe he has one sister who is a full sibling.

Mitch Carr -- Right. I think what's important here is this can be a life lesson for all of us.

Tamera Bennett -- It sure can. Because we want to -- I think most of us want to control what happens to what we own whether it be small or large-- at the end of the day. And, even more than that do we really want to put our family into a position of having to figure out our wishes? And, sometimes these kind of disputes can not be fun.  So, I'm hopeful that their family will not have a lot of disputes. But, they might. We've seen it with other estates as they've passed away -- Ray Charles, James Brown.  And, in those cases they actually did do a plan.

Mitch Carr --  The fact that there can be fights either way, what does that tell us about how we should do our estate plan? How can we draw something up that won't end up in a legal battle?

Tamera Bennett --  There's nothing that's ever foolproof because it depends on the people who are left.

Mitch Carr -- Alright.

Tamera Bennett -- So, one of the recommendations we often have for people is to spell out why you're leaving them what you're leaving them. And, you don't fully disinherit people.

Mitch Carr -- The bottom line here from a legal aspect is do what you can but nothing's foolproof.

Tamera Bennett -- Exactly right and I think what's interesting partly about Prince is that there are some assets that he has that are very valuable that under Minnesota law it's going to be difficult to figure out who gets them. And one one of that is his right of publicity. So his name and likeness is obviously very valuable. In Texas we actually have a statute that says if -- pretty much -- if you're a famous person and you take value from your name or your likeness or you license that, for fifty years after your death, your heirs can benefit and control how your name and likeness is used. Minnesota doesn't have that law saying that it's inherited.

Mitch Carr -- It's unclear how much Prince's estate is worth. But during his career, he made hundreds of millions of dollars for record companies, concert venues and others . . . and he owned $27 million in property near Minneapolis.

Follow Tamera on Twitter @tamerabennett and Mitch on Twitter @mitchcarrnews.

The clip is used by permission of KRLD-CBS Dallas.

Real Trademarks in Virtual Game Worlds - VIRAG

real-trademarks-in-videogames-createprotect.com

Video games have become so realistic sometimes I struggle to tell the difference on a computer or TV screen between what's real and what's virtual. Game developers include familiar trademarks and brands to bring authenticity to the game.

First Amendment v. Trademark

In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The standard test is is the two-prong Rogers test:  1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.

It would probably be helpful to jump over to Tamera's article Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media for some basics on the topic of fair use and trademarks and more background on application to video games.

Virag, S.R.L. v. Sony Computer Ent. America LLC

Race cars don’t seem to bring any new twists to the Rogers test. In Virag, S.R.L. v. Sony Computer Ent. America LLC, 3:15-cv-01729 (N.D. Calif. 2015), Virag, a flooring manufacturer, sponsors the Rally of Monza Track in Formula 1 racing. This means their trademark is visual around the track. And, one of their owners, Mirco Virag is a Formula 1 race car driver.  In 2010, Sony released the race car driving simulation game Gran Turismo 5 including a simulation of the Monza Track and the VIRAG trademark on a bridge in the game. The VIRAG mark was also used in Gran Turismo 6.

The court applied the Roger’s test on a Motion to Dismiss holding: 1) Since the game is focused on having a realistic race experience, using the VIRAG mark has some artistic relevance to the video game; and, under prong 2) there was no intentional misleading of consumers as to sponsorship. Gran Turismo 5 and 6 are race car simulation games. Because the VIRAG mark was used on the track and not on a race car, the court found the use was not intentionally misleading to consumers. Compare the holding and discussion in Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012).

The result of each video game case is fact-determined. What does that mean? Simply, the facts of the case determine the outcome. There's not a clear yes or no answer as to whether or not it's fair use to use a trademark you don't own in your video game.

Texas trademark lawyer Tamera Bennett will share even more of her thoughts on this topic at the TexasBarCLE Advanced IP Conference on February 18, 2016.
 


Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media

hangover-2-luis-vuitton-fairuse-trademark.jpg

This article was written by Dallas-area trademark lawyer Tamera H. Bennett with great assistance from Video Game Lawyer Zack Strebeck.

Introduction

Brands are everywhere. According to the U.S. Patent and Trademark Office, 193,121 trademark registrations were issued in 2013 alone.  With brands pervading our daily lives, we’re accustomed to seeing those brands show up in alternate realities such as film, TV, comparative advertising and even video game worlds.

Is a “brand” any different than a trademark? Not really.  Brand is the pop culture term for a trademark.  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.  Throughout this article, the terms “trademark” and “mark” refer to both trademarks and service marks.

Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. Use of another’s trademark may be permissible as “fair use” if the use does not infringe the trademark. We are going to take a look at how a third party may successfully and sometimes unsuccessfully use a trademark they don’t own in a media context.

I.          Fair Use and Trademarks

A.        Descriptive Fair Use

What do we do when a trademark also describes a person, a place or an attribute of a product?  A trademark owner can’t have exclusive rights in such use as too many terms would be taken out of the language for commonevery day usage. Trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin." 15 U.S.C. § 1115(b)(4). "The [descriptive] `fair-use' defense, in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).

When the allegedly infringing term is ‘used fairly and in good faith only to describe to users the goods or services of [a] party, or their geographic origin,’ Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) (1976), a defendant in a trademark infringement action may assert the "fair use" defense. The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983) quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir.1980). The court held in Zatarain’s that “Fish-Fri” is a descriptive term for coating for fish.  The term “Fish Fry” may be used by a competitor in its ordinary, descriptive sense.

B.        Nominative Fair Use

Sometimes there is only one way to convey a message.  And, when that situation arises, use of a third-party trademark will be considered fair use. In addition to a statutory descriptive fair use, we now have a judicial carve-out for nominative fair use.

With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute . . . when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.

New Kids at 306. To prove nominative fair use, a defendant must satisfy three requirements: (1) the plaintiff's product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff's product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.  E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F.Supp.2d 1012, 1029 (C.D.Cal.2006).

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.  A woman who was a Playboy Playmate should be allowed to describe herself in the capacity without infringing the trademarks.  Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002). The court agrees saying the use of the Playboy trademarks is nominative.

While comparative advertising must be truthful and comply with all Federal Trade Commission requirements, it’s okay for a Coca Cola® advertisement to use a Pepsi® product in a comparative advertisement.  The nominative fair use defense is, clearly applied when the defendant uses the plaintiff’s mark to refer to the plaintiff’s product, even though the defendant's ultimate goal is to describe his own product.  E.S.S. Entm't 2000 at 1029.

C.    First Amendment vs Trademark

The legal standards for determining trademark fair use may shift when we move from a descriptive or commercial use into a creative use.  In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, even the title of the work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights.

What is that standard when we are talking about expressive works? The test used by multiple circuits (originally in the 2nd Circuit, but later adopted by courts in the 7th, 9th and 11th Circuits) is the two-prong Rogers test:  1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.  Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012).  Expressive works include art work, motion pictures, songs and books. 

D.        Titles: 

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights. In general, courts do not want to reach a Constitutional analysis if a decision can be reached by application of other laws.  That’s what happened in Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013), when the court held there was no trademark infringement of rap artist’s PHIFTY 50 name by the film titled 50/50.  The district court dismissed the complaint under Fed.R.Civ.P. 12(b)(6), ruling the movie's title descriptive because the film concerns a 50 percent chance of the main character surviving cancer and the Court of Appeals affirmed. Eastland Music at 870.  “It is unnecessary to consider possible constitutional defenses to trademark enforcement . . . because this complaint fails at the threshold: it does not allege that the use of "50/50" as a title has caused any confusion about the film's source.” Id. at 871.

E.        Film:

Dark Night Rises

In the film “The Dark Knight Rises,” Catwoman sought to erase her criminal record from every computer database around the world.  To do it she had to get her paws on the fictional CLEAN SLATE software developed by the fictional company "Rykin Data Corporation."   Fortres Grand Corp., a very non-fictional company has a software product called the “Clean Slate” and a registered trademark for "[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot."  Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014).

Fortres Grand noticed product sales were declining after the 2012 movie release and brought suit against Warner Bros. for trademark infringement. The District Court held for Warner Bros., finding there could not possibly be confusion as to the source of origin of the two products since Warner Bros. is in the business of making movies and Fortres Grand makes software.  The Seventh Circuit affirmed.

In this case, even though we are talking about an expressive and very creative work in the nature of the film, the Court of Appeals never mentions the Rogers test and makes its decision based on the traditional trademark infringement standard of likelihood of consumer confusion. We have to look at the District Court opinion to review the analysis under Rogers and the decision reached after reviewing the Rogers test. “In this case, there can be little doubt that Warner Bros, has satisfied both prongs of the Rogers test. The first prong — artistic relevance — establishes a purposely low threshold which is satisfied unless the use ‘has no artistic relevance to the underlying work whatsoever.’” Fortres Grand Corp. v. Warner Bros. Entertainment, 947 F. Supp. 2d 922, 932 (N.D. Ind. 2013).  Additionally, Warner Bros. clearly satisfied the second prong of the Rogers test — the film's use of "clean slate" is not "explicitly mislead[ing] as to the source or the content of the work." Id.

The District Court found there was no plausible claim for consumer confusion and Warner Bros.’ use of “Clean Slate” is protected by the First Amendment. The Court of Appeals affirmed without ever reaching the First Amendment question. Fortres Grand, No. 13-2337 (7th Cir. Aug. 14, 2014).

Hangover II

Another fun case involves the Louis Vuitton design trademarks and the movie HANGOVER II. Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012). One of the lead characters in the film travels with an ensemble of "fake" Louis Vuitton bags. To add insult to injury, the character even mispronounces the name of the brand in the film. Louis Vuitton sued. Interestingly enough, Louis Vuitton did not file suit claiming consumer confusion because Vuitton did not authorise the use fo the bags in the film. Rather, Louis Vuitton claims that Warner Bros. used a third-party's bag that allegedly infringes on the Louis Vuitton marks. Remember - it was a "fake" bag.

The District Court applied the Rogers Test finding 1) sufficient artistic relevance in using the Louis Vuitton mark in the film, and 2) using the "fake" bag was not intentionally misleading. The trademarks were not used in a way to "induce members of the public to believe [the film] was prepared or otherwise authorized" by Louis Vuitton.

Louis Vuitton was hung up on arguing that using the "fake" bag somehow created liability because consumers would believe the "fake" was the real thing. The court would not extend the law to include liability for using a "fake" trademark in the film.

F.         Songs:

Barbie Girl

The Ninth Circuit held that the use of the trademark BARBIE was permitted in a song and its title which parodied and made fun of the vacuous, party-girl image that has evolved from the BARBIE doll. Applying the Rogers test the court found that the use of the mark in the song title had artistic relevance to the content of the song.  Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S. Ct. 993, 154 L. Ed. 2d 912 (2003). And, for all you Texas music fans out there, the result should be the same for the song “Barbie Doll” by Jack Ingram.

G.        Visual Arts:

Paintings and works of art clearly fall under First Amendment protection.  In balancing the rights for free expression and artistic relevance against any possible misleading as to the source of a particular painting, the Eleventh Circuit held the First Amendment trumped trademark rights in original paintings of the University of Alabama football team.  University of Ala. Bd. of Trustees v. New Life Art, 683 F. 3d 1266 (11th Cir. 2012).

H.        Video Games:

As technology improves and video games become more realistic, the issue of third-party trademark use in the games industry is becoming increasingly relevant. Already, there have been a few important cases which bring the tests and case law from other media into video game industry trademark disputes.

The Supreme Court in Brown v. Entertainment Merchants Ass'n, 131 S.Ct. 2729 (2011), stated, “[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages—through many familiar literary devices [such as characters, dialogue, plot and music] and through features distinctive to the medium [such as the player's interaction with the virtual world]. That suffices to confer First Amendment protection.”

Grand Theft Auto

In E.S.S. Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1097 (9th Cir. 2008), Rock Star created the video game Grand Theft Auto: San Andreas. In the game, which itself is set in a parody of the Los Angeles area, there is a strip club called the “Pig Pen Gentlemen’s Club” in an area that resembles East Los Angeles.  E.S.S. operates a real-world strip club called the “Play Pen.”  The styling of the building and logo is very similar for both, and the facts indicate that Rock Star’s artists traveled to the area and photographed locations for reference.

Grand Theft Auto Pay Pen Trademark fair use

The creation of the “Los Angeles” atmosphere in the Grand Theft Auto game met the Court’s “minimum threshold” standard for artistic relevance. The Court also found that a consumer would probably not believe that the owners of the Play Pen would have created this video game. Therefore, they found no misleading behavior on Rock Star’s part.

Dillinger

Dillinger, LLC v. v. Electronic Arts Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011), is a lawsuit brought by the heirs of famed criminal John Dillinger for infringement by Electronic Arts in their video games based on the “Godfather” movies. In the games, “Dillinger” is used to refer to the firearms (so-called Tommy guns) used by the player.

The Court found, in applying the Rogers test, there was artistic relevance in referring to the gun as a Dillinger, as that was the real person’s firearm of choice. No evidence was presented of any misleading actions on the part of Electronic Arts, either, so both prongs of the test were met and Electronic Arts was granted summary judgment.

Battlefield 3

Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works.
— Tamera H. Bennett

In  Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012), Electronic Arts sought a declaratory judgment from the district court regarding their use of Textron’s protected trade dress in various military hardware. Electronic Arts argued that their video game, Battlefield 3, was an expressive work protected by the First Amendment. Given that, they were entitled to the same fair use protections entitled to other media forms.  Initially there was a license between Electronic Arts and Bell for use of the Bell helicopters in the video game. Electronic Arts announcedit would no longer pay the license fees and sought a declaratory judgment of non-infringement. Textron responded by filing various trademark infringement counterclaims.

The District Court, however, distinguished this case from the earlier E.S.S. case in the same circuit. Where the Pig Pen strip club was merely part of the background in the Grand Theft Auto game, the helicopters in Battlefield 3 were more prominent in both the game and its advertisements. In rejecting the motion to dismiss, the District Court held that it was plausible that a consumer could believe that Textron had supported the game or authorized the use of its marks. Even a disclaimer, the Court said, was not enough to overcome this possibility. The two companies later settled the dispute on confidential terms.

Conclusion:

Using a third-party trademark in your next film, TV show, song or video game my very well be permissible without securing permission. Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works. Keep in mind, even in an expressive work, the courts will not always reach a First Amendment analysis if a decision can be reached under a traditional likelihood of consumer confusion analysis.

Links to cases cited in this article and other news reports of interest are located in a collection on Google Plus.

The article was originally published as part of the course materials for the TexasBarCLE Entertainment Law Institute 2014.

Catwoman Wipes a Clean Slate - Trademark Fair Use

Originally published as "Weighing Trademark Claims When Real Products Appear in Movies and TV" in the TEXAS LAWYER on November 10, 2014. Reprinted with permission.

By: Tamera H. Bennett

Anyone who has watched an episode of "The Big Bang Theory" is sure to hear about "Star Wars" and "Star Trek." Do TV or film producers need permission to include trademark references in the program or movie? From "The Big Bang Theory" to Batman movies, the debate over trademark infringement and fair use in media properties is a hot topic.

A trademark is a word, phrase, symbol or design, or a combination of those things that identifies and distinguishes the source of the goods of one party from those of another. Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent confusion about the source of the goods or services. Use of another's trademark can be permissible as a "fair use."

The legal standard for trademark infringement is measured by a likelihood of consumer confusion. In its simplest terms, the standard asks whether a consumer will be confused as to the source of a product or service. A number of factors may be reviewed in making a determination of likelihood of consumer confusion in a trademark infringement case.

In the Aug. 14, 2014 ruling in Fortres Grand Corp. v. Warner Bros. Entertainment, the U.S. Court of Appeals for the Seventh Circuit stated "only confusion about 'origin, sponsorship, or approval of ... goods' supports a trademark [infringement] claim."

The legal dispute in Fortres Grand arose from The Dark Knight Rises, in which Selina Kyle (Catwoman) seeks to erase her criminal record from every computer database around the world. To erase herself, she had to get her paws on the fictional "Clean Slate" software. Fortres Grand Corp., a very real company, has a software product called the "Clean Slate" and a registered trademark for "[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot."

According to the Seventh Circuit ruling, Fortres Grand noticed product sales were declining after the 2012 movie release and sued Warner Bros. for trademark infringement. In a 2013 ruling on a motion to dismiss, the Northern District Court of Indiana held for Warner Bros., finding no likelihood of consumer confusion as to the source of origin of the two products since Warner Bros. is in the business of making movies and Fortres Grand makes software.

The District Court relied on the 1989 U.S. Court of Appeals for the Second Circuit opinion in Rogers v. Grimaldi which held creative works, as compared to purely commercial endeavors, are protected as free speech by the First Amendment. Because of the First Amendment protection, the Rogers court concluded a balancing act must occur between the rights of the trademark owner and the First Amendment rights arising in the creative work. The court only reaches the balancing act after finding a likelihood of consumer confusion.

The balancing test used by the Second, Seventh, Ninth and Eleventh circuits, is the two-prong Rogers test: 1. whether the use of the third-party trademark has artistic relevance; and 2. if so, is it deliberately misleading as to the source or content of the work.

While there’s always a risk of a client getting sued if their next film references a third-party trademark, a client’s risk is reduced if it is only a passing reference and is not deliberately misleading to consumers.
— Tamera H. Bennett

The District Court found there was no plausible claim for consumer confusion between the Fortres Grand product "Clean Slate" and Warner Bros.' movie The Dark Knight Rises. The District Court, in applying Rogers, found artistic relevance in the film. And, that using the term "Clean Slate" was not explicitly misleading as to the source or the content of the movie. The District Court held that Warner Bros.' use was protected by the First Amendment. Because the Seventh Circuit affirmed the motion to dismiss on the grounds of no likelihood of consumer confusion, the Seventh Circuit had no reason to address the First Amendment question.

If Warner Bros. is OK to reference a fictional product that just happens to be a real product name and registered trademark, can clients use "Coke" or "Star Wars" in their films or TV shows without concern?

The sitcom "The Big Bang Theory" is centered on the lives of four geeky friends. The storyline revolves around their geekdom that includes "Star Wars," "Star Trek," and "Dungeons and Dragons." While the references to third-party trademarks flow in and out of the storyline, it's hard to imagine the trademark owners could succeed in a trademark infringement claim. Even if the court found there was a likelihood of consumer confusion between the source of the TV show and the source of the trademark, the Rogers test should trump.

Under prong one, the referenced brand names and trademarks tie into the show and have artistic relevance to the subject matter. And, under prong two, the producers of "The Big Bang Theory" don't seem to be deliberately misleading consumers to a connection between the source of the show and the owners of the trademarks. In fact, the show references so many different trademarks in the normal course of conversation between the characters it seems unlikely a consumer would consider each brand had a connection to the show.

While there's always a risk of a client getting sued if their next film references a third-party trademark, a client's risk is reduced if it is only a passing reference and is not deliberately misleading to consumers. So, Catwoman gets to move forward with a clean slate on trademark infringement. And, it's just a theory, but "The Big Bang Theory" probably shouldn't worry, either.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office in Lewisville.


Read more: http://www.texaslawyer.com/id=1202675768561/Weighing-Trademark-Claims-When-Real-Products-Appear-in-Movies-and-TV#ixzz3Ihm30Lea

Who Controls Your Likeness? Balancing Right of Publicity and Free Speech

Originally Published in TEXAS LAWYER*

 Tamera H. Bennett

Tamera H. Bennett

Sharing photos has never been easier. From checking out Ellen Degeneres' selfies at the Oscars to uploading family vacation pictures, even lawyers don't always think through how third parties might use their likenesses. But two pending court cases might change that.

Imagine that a photographer allows an engaged couple to post engagement photos online. Then, a political mailer features—without the couple's permission—a photo of them kissing, superimposed on a new background with the prominent text "State Sen. [XYZ]'s idea of 'family values'?" It happens during a heated primary race where gay marriage is a hot button topic, the mailers oppose same-sex marriage, and the newly engaged people are two gay men.

Or, imagine someone learning via Facebook that a full-color, quarter-page advertisement used her likeness and included the statements: "I am positive (+)," "I have rights," and "People who are HIV positive are protected by the New York State Human Rights Law. Do you know your rights?" By the way, the woman doesn't have HIV and didn't authorize use of her likeness.

Both fact patterns are the subjects of current litigation, with the plaintiffs bringing causes of action for misappropriation of the right of publicity and/or privacy.

Colorado common law governing torts for appropriation of name or likeness controls the political mailer case. The law requires a plaintiff to prove that: the defendant used the plaintiff's name or likeness; the use was for the defendant's own purposes or benefit, commercially or otherwise; the plaintiff suffered damages; and the defendant caused the damages.

Colorado Law

In a March 31 opinion in Hill v. Public Advocate of the United States, the U.S. District Court for the District of Colorado granted the defendants' motions to dismiss in relevant part; the defendants are all political advocates. The Hill court stated, "[A] plaintiff will not prevail on [an appropriation claim] if a 'defendant's use of the plaintiff's name and likeness is privileged under the First Amendment.'" But the use of the name and likeness must occur in the context of, and reasonably relate to, a publication concerning a matter that is newsworthy or of legitimate public concern.

The court found that the men's images were used without permission, but the use was not commercial. The use communicated a matter of legitimate public concern and did not issue a call to purchase a product or service. The mailers were sent before an election in a year when gay marriage was a campaign issue. The mailers also went out before Colorado lawmakers enacted the Colorado Civil Union Law, which grants same-sex couples the right to enter into a civil union.

The district court determined that the use of the gentlemen's likeness reasonably related to a matter of legitimate public concern: same-sex marriage. The court's balancing act weighed heavily in favor of free speech based upon the timeliness of the mailers. In the end, the First Amendment trumped the individual right of publicity.

New York Law

Let's revisit the HIV awareness campaign issue. According to the complaint filed on Sept. 18, 2013, in Nolan v. Getty Images (US) Inc., Avril Nolan alleged that a photographer took her picture years ago for an unrelated project. Nolan never signed a release or license with the photographer to use the picture. Subsequently, the photographer licensed the photo to Getty, a worldwide commercial supplier of images. Getty licensed Nolan's picture to the New York State Division of Human Rights to place in the AIDS awareness "I am positive(+)" campaign.

In the March 6 New York trial court opinion, the court stated that New York does not recognize the common law misappropriation torts of privacy or publicity. Instead, the rights and cause of action are statutory. Under New York Civil Right Law §50, an entity "that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person … is guilty of a misdemeanor."

The trial court denied Getty's motion to dismiss for failure to state a cause of action on March 6. The court found Getty's action—placing Nolan's image on its website for viewing by potential licensees—met the statutory requirement of "use" within the state.

Questions to Consider

It's unclear to me how Getty's alleged actions violate §50. But what if Nolan had sued the New York State Division of Human Rights? In that scenario, the Colorado federal court's reasoning in Hill might provide insight. Arguably, the HIV awareness campaign communicated a matter of legitimate public concern, so free speech might trump the right of publicity or privacy.

I wonder if, in either case, it would make a difference if the individuals pictured in the likeness allegedly used without authorization had been famous. Would a "commercial nature" begin to arise if it looked as if a famous athlete or actor was opposing gay marriage or supporting HIV awareness? While the tort of misappropriation applies to people who aren't famous, the scales balancing First Amendment and right of publicity might tip differently if the likeness used is well-known.

These cases should remind lawyers to think twice—and perhaps a third time—before posting that next selfie. You just don't know where it might end up.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office in Lewisville.

*Reprinted with permission from the April 14, 2014 print edition of Texas Lawyer. © 2014 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.  Read more: http://www.texaslawyer.com/id=1202650390510/Who-Controls-Your-Likeness%3F-Balancing-Right-of-Publicity-and-Free-Speech#ixzz2zdHbeUxd