domain names

Podcast: Entertainment Law Update Episode 13

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Lucky Episode 13 of the Entertainment Law Update Podcast with hosts  Los Angeles based film lawyer Gordon P. Firemark and Texas based music lawyer Tamera H. Bennett is available here. Gordon and I had a lot of fun this month discussing multiple topics including:

Justin Bieber's Twitter "prank" Judge Gertner's recent opinion in Sony v. Tenenbaum Child labor laws and the production of "Kate Plus 8" Fleeting Expletives Don Johnson/Alan Ladd, Jr./Celedor -- Profit Participation Wins

Take a listen to stay up-to-date on film law, music law, copyright law and trademark law.

Texassports.org: University of Texas Lost Bad Faith UDRP Action

The University of Texas was unsuccessful in a bad faith domain name action to acquire www.texassports.org. The University is the owner of www.texassports.com and registered trademarks for:  TEXAS, UNIVERSITY OF TEXAS, TEXAS LONGHORNS, and LONGHORNS.  In particular, TEXAS is registered for "Entertainment services, namely, providing college athletic and sporting events."

In the UDRP action, the University asserted www.texassports.org was registered in bad faith, that the registrant had no legitimate rights to the name, and the use of the domain may cause confusion with the University's www.texassports.com domain.  The domain www.texassports.org was used as  "parking" website for information related to University of Texas sports and sporting events.

To be successful the University needed to prove:

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

The UDRP panel found www.texassports.org defense persuasive:

"Texas sports" is geographically descriptive and not protected by trademark.  The University does not have the exclusive rights to "Texas" and "Sports."  The University does not have a registered trademark for "Texas Sports."  There is no likelihood of consumer confusion.

The University did not prove "bad faith."  Again, common, geographic terms are not typically going to rise to the level of a bad faith acquisition.

More about the UDRP decision may be found here.

Yo Quiero Domain Name - Yum! Brands (Taco Bell) v. Nelson Wellness & Therapy Center

You may have seen Taco Bell's New Year weight loss campaign, "Drive Thru Diet."  I have to admit, I have sampled the menu. Taco Bell acquired www.drivethrudiet.com prior to the campaign launch in 2010, but did not secure www.drivethroughdiet.com, a domain owned by a Georgia weight loss center.

Yum! Brands, the parent company of Taco Bell, filed a UDRP Bad Faith action to acquire the Georgia weight loss center's domain name.

The arbitration panel denied Yum! Brand's request to transfer drivethroughdiet.com based on 4 factors:

  • 1) Drivethrudiet.com was under construction until December 21, 2009;
  • 2) Yum! Brands did not provide evidence of using their trademark first;
  • 3) The trademark registration for, DRIVE-THRU DIET was assigned to Yum! Brands in October 2008, and
  • 4) There was no evidence the Georgia weight loss center had registered and used their domain in bad faith.

To be successful on an UDRP bad faith/cybersquatting claiming the following factors must be meet:

  • Domain name in question is identical or confusingly similar to a trademark in which Complainant has rights
  • Respondent has no legitimate rights/interests in domain name
  • Domain name has been registered and used in bad faith.

Read the arbitration decision here.

Listen to attorney Tamera Bennett and attorney Gordon Firemark discuss this decision on the Entertainment Law Update Podcast Episode 8.

BLAWG REVIEW #212

By Tamera H. Bennett BLAWG REVIEW #212

"You Don't Have To Call Me Darlin,' Darlin'"

When I teach music publishing classes or seminars I always give an example to explain the difference between an idea and the expression of an idea. The expression of the idea fixed into a tangible medium is what is protected by copyright law.

My favorite example is to tell the class they each need to write a song that includes these ideas: trains, rain, momma, jail and pickup trucks.  (Yes, lyrics still count).  In the end they may all come up with something completely different and each original work would be protected by copyright law. Even if those same ideas are found in another song … the perfect Country & Western song.

Songwriter Steve Goodman penned the lyrics that singer David Allan Coe made famous in 1974  and turned the classic country song “You Never Even Call Me By My Name” a/k/a “You Don’t Have To Call Me Darlin,’ Darlin’” click to watch the video into a country cult classic. (Country cult is not an oxymoron, is it?)

Verse One Well it was all That I could do to keep from cryin' Sometimes it seemed so useless to remain But you don't have to call me darlin', darlin' You never even call me by my name

Sometimes it seemed so useless to remain…  We don’t know for sure if he and “darlin” are married, but in Texas it could have been a common law marriage.  Watch out during those divorce proceedings for taped phone calls and emails showing up in discovery says the New Jersey Law Blog.  The Alabama Family Law Blog makes it clear it takes two to tango but only one spouse to get a divorce.

You never even call me by my name… As a trademark/branding lawyer one of my clients' biggest concerns is being called by the right name and making sure no competitor is using the same or similar name.   Check with the Los Angeles Trademark Attorney Blog to see if it is the  "The Girl From Ipanema" wearing that IPANEMA tagged swimsuit.  Over at the TTABLOG we can voice our thoughts on Lamb's vs Lam for rum.  Las Vegas Trademark Attorney Ryan Giles asks will the real Andre Agassi and Stephi Graf stand up now that their cybersquatters are down? Mr. President, please do not be confused by those pending OBAMA trademark applications in the EU as reported by the IPKAT.  And Google, what are you doing now with those crazy adwords?  Read the update from IP lawyer Ron Coleman on the Texas class action against Google.  This week is the Annual International Trademark Association Convention in Seattle so I am giving a special shout out to Seattle Trademark Attorney Michael Atkins comparing the Space Needle to the Rock 'n Roll Hall of Fame.

Verse Two You don't have to call me Waylon Jennings And you don't have to call me Charley Pride And you don't have to call me Merle Haggard, anymore Even though you're on my fightin' side

CHORUS: And I'll hang around as long as you will let me And I never minded standin' in the rain But you don't have to call me darlin', darlin' You never even call me by my name

Just make sure she really wants you hanging around because GPS can now be attached to stalkers.

Verse Three Well I've heard my name A few times in your phone book (Hello, Hello) And I've seen it on signs where I've played But the only time I know I'll hear David Allan Coe Is when Jesus has his final Judgment Day

REPEAT CHORUS

Watch out for those signs, too.  Like Woody Allen, sometimes your picture might be associated with something you oppose.

RECITATION: Well, a friend of mine named Steve Goodman wrote that song And he told me it was the perfect Country & Western song I wrote him back a letter and I told him it was not the perfect Country & Western song because he hadn't said anything at all about Mama, Or trains, Or trucks, Or prison, Or gettin' drunk. Well he sat down and wrote another verse to the song And he sent it to me, And after reading it, I realized that my friend had written the perfect Country & Western song And I felt obliged to include it on this album The last verse goes like this here:

Well I was drunk the day my Mom got out of prison And I went to pick her up in the rain But before I could get to the station in my pickup truck She got runned over by a damned old train

This additional verse that makes the song the perfect country and western song, also makes it o-so perfect for Blawg Review….

Did he say drunk and prison in the same line? You better see what my Twitter colleagues have to say at the Criminal Defense Blog, the Simple Justice Blog and the Defending People Blog.

Trains, people and trucks rarely make a good combination.  See what the Chicago Injury Lawyer Blog has to say about a recent train accident. Read here about the man charged with DUI in a car/train accident.  Also, no texting while driving the train.

CHORUS: And I'll hang around as long as you will let me And I never minded standin' in the rain No, you don't have to call me darlin', darlin' You never even call me Well I wonder why you don't call me Why don't you ever call me by my name

Until I re-read this post I thought it was the perfect Blawg Review post.  Then I realized it said nothing about...

Fashion and the law Cuban Trade Laws and the impact on music Estate PlanningCopyright InfringementNegotiationsThe TheatreSocial Media in the music businessBranding in the music businessPatents in the music business or Tattoos -- Famous Trademarks as Tattoos, that is

Now I realize I have written the perfect Blawg Review post.

You don't have to call me Darlin,' Darlin' .... just call me lawyer Tamera H. Bennett.

Blawg Review has information about next week's host, and instructions on how to get your blawg posts reviewed in upcoming issues.

UPDATED 5/18/09:  American Apparel and Woody Allen settled for $5 Million after this Blawg Review went to press.  Read more here.

IP Insurance Claims On The Rise

By Tamera H. BennettPosted December 4, 2008

"Expect to see more and more companies file insurance claims over intellectual property, or IP, infringements as times get tougher...." Read the full article here from NJBIZ.

Keep in mind that your friendly insurance agent that carries the policy for your home, auto and business contents most likely will not have the knowledge base to get you into an insurance policy that will actually cover defending or prosecuting an IP infringement case. You need to work with insurance agents that specialize in these types of policies.

Alltop Selects Current Trends In Copyright, Trademark & Entertainment Law Blog

Alltop, all the cool kids (and me)

by Tamera H. Bennett

I am excited to announce that the Current Trends in Copyright, Trademark & Entertainment Law Blog has been included at Alltop as part of its "online magazine rack" where Alltop aggregates RSS feeds on many topics, including law.

Seton Hall Call For Journal Articles

by Tamera H. BennettApril 23, 2008

The folks over at Seton Hall Law Review requested I pass along the following information:

Journal of Sports and Entertainment Law Call for Submissions!

The Seton Hall School of Law Journal of Sports & Entertainment Law is seeking submissions for possible publication in future issues. If you are a law professor, other type of professor, practicing attorney, judicial clerk, law student, or graduate student who has written a substantive piece that pertains to sports or entertainment law, please consider submitting your work.

For more information or to submit a piece, please e-mail Tara Touloumis, Articles Editor, ttouloumis at gmail.com. Thank you!