trademark litigation

Entertainment Law Update Podcast - Episode 100 Tamera Bennett & Gordon Firemark

100 entertainment law update podcast tamera bennett gordon firemark.jpg

100 episodes later and the Entertainment Law Update Podcast is still going strong!

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the legal highlights from the past nine years on this very special episode of the Entertainment Law Update Podcast. Yes, we said "Righthaven" one more time.

Click the arrow below to listen or click the "Apple" below to subscribe for free in iTunes.

In this very special episode Tamera and Gordon covered:

and much more.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

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Entertainment Law Update Podcast - Episode 99 Tamera Bennett and Gordon Firemark

Entertainment Law Update Podcast 99 Tamera Bennett Gordon Firemark #podcast #musicbiz #copyright #trademark.jpg

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link, I may receive a benefit.

Entertainment Law Update Podcast Episode 98 - Tamera Bennett and Gordon Firemark

Podcast Episode 98 Tamera Bennett Gordon Firemark.jpg

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link, I may receive a benefit.

Entertainment Law Update Podcast Episode 97 - Tamera Bennett and Gordon Firemark

Podcast episode 97 tamera bennett gordon firemark.jpg

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a clink, I may receive a benefit.

Entertainment Law Update Episode 95: Tamera Bennett and Gordon Firemark

Podcast Episode 95 Tamera Bennett Gordon Firemark.jpg

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

This episode of the Entertainment Law Update Podcast is brought to you by LawPay. If you are lawyer or law firm and need a better way to process credit cards, visit  lawpay.com/elu .

This episode of the Entertainment Law Update Podcast is brought to you by LawPay. If you are lawyer or law firm and need a better way to process credit cards, visit lawpay.com/elu.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Year In Review - 2018 Entertainment Law Update Podcast

2018 Year in Review Tamera Bennett Gordon Firemark #podcast Entertainment Law Update

2018 was full of fun and interesting entertainment law cases and issues. Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark on their annual year-end wrap up of entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In this episode of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

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.

Entertainment Law Update Episode 86 -- Tamera Bennett & Gordon Firemark

Entertainment Law Update #podcast episode 86 Tamera Bennett Gordon Firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

In Episode 86 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Entertainment Law Update Podcast Episode 85: Tamera Bennett, Gordon Firemark

entertainment law update podcast tamera bennett gordon firemark

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen or click the "Apple" below to subscribe in iTunes.

Entertainment Law Topics In This Podcast Episode:

In Episode 85 of the Entertainment Law Update Podcast, Tamera and Gordon discuss the latest news and cases involving copyright, trademark, film, TV, and other entertainment law issues.

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

This post contains affiliate links. That means if you click a link I may receive a benefit.

Empire v Empire: The Fox TV Show vs the Record Distributor - Trademark Fair Use

Empire tv vs Empire Distribution

In January 2015, the Fox television show EMPIRE debuted. It’s a fictional story of a feuding entertainment industry family that chronicles the struggles of a rapper and drug dealer turned music industry mogul. In the first episode we learn the mogul is dying and the family battle begins to control the “empire.”

Like most television shows about the music business, music is heavily featured in the show. So much so, Fox partners with Columbia Records to release songs following the broadcast of each episode. Fox also promotes artists and their music that has been featured on an episode at radio stations and live performances.

Empire Distribution is a record label, music distributor, and publishing company formed in 2010. Empire Distribution has distributed music by Kendric Lamar, Snoopdog, Gladys Knight, and many others. In fact, Empire Distribution is recognized as a major player in the rap and hip hop genres.  Empire Distribution claims common law rights in various Empire trademarks and has multiple pending federal trademark applications.

After the television show began airing in 2015, Empire Distribution sent a cease and desist letter to Fox alleging trademark infringement. Fox responded by filing a declaratory judgement action in the U.S. District Court for Central California, Los Angeles.

Fox claims their ability to name the show EMPIRE is protected by the First Amendment, ie, freedom of expression. Empire Distribution alleges Fox’s actions amount to trademark infringement and that actual consumers are confused that there is a connection between the TV show and Empire Distribution.

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). To read an overview of how the Rogers Test has been applied in other cases, click here.

On Summary Judgment the court reviewed and applied the 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. 

  1. Is there artistic relevance: The district court found that using the word empire was appropriate since the show is about a struggle for control over the vast music business empire. The TV show is also set in New York – the Empire State.
  2. Does the Empire TV series explicitly mislead as to the source of the content of the work?

The parties disagree on the appropriate test to apply. Empire Distribution argues that a traditional trademark likelihood of consumer confusion analysis must be considered in this prong. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Fox argues the plain language of Rogers is the test and that using a third-party trademark must be an “explicit indication, overt claim, or explicit misstatement” as to the source of the work or prong two is met.

The court held on summary judgment that even with a showing of consumer confusion, First Amendment rights still trump if there was no intent on the part of the junior user to explicitly mislead. Fox wins on the second prong of the Rogers Test.

As expected, Empire Distribution appealed the Summary Judgment decision. In addition to procedural issues, Empire Distribution argues that Fox used EMPIRE beyond the title of an expressive work. Fox’s marketing plans from the beginning was to launch a record label, sign recording artist, and create EMPIRE branded merchandise. Empire Distribution argues on appeal, “Ultimately, under the district court’s very narrow application of the ‘explicitly misleading’ prong, the prong could virtually never be satisfied (or even reach a determination at trial), absent an admission or other smoking gun evidence that the defendant was deliberately attempting to mislead consumers. Under the district court’s holding, one could start a competing record label today called Motown, Sony, Universal or Def Jam, and so long as they could provide any artistic reason for the name, they would be protected under the First Amendment, regardless of the amount of consumer confusion.”

Fox argues that its merchandise and promotional efforts using EMPIRE were not properly before the court, and did not relate to Fox’s actual claim, which is premised on the title and content of Fox’s show and soundtracks. Fox goes on to state, “Rogers makes clear that, so long as an artist does not explicitly mislead the public about his work, the First Amendment protects his efforts to promote it. If Rogers worked otherwise, it would be an empty promise.” In effect Fox is claiming they can distribute directly competitive merchandise that “promotes” their creative work without repercussion of trademark infringement.

As a trademark lawyer, I’m very concerned for the path Fox is taking. While I support and understand the value of freedom of expression and the ability to use a third-party trademark in creative works, the district court took this a step too far. I believe the courts should first make the decision on likelihood of consumer confusion when faced with a third-party trademark in a creative work. If there’s no consumer confusion, then there’s no reason to make a first amendment analysis. If there is consumer confusion, than apply the Rogers Test.  You can see this application in the following cases – both out of the seventh circuit: Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014); Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013). I argue that consumer confusion has to be considered in the second prong of the Rogers Test.

See Twentieth Century Fox Tel., et al v. Empire Distribution, Inc., (9th Circuit - 16-55577). As of April 24, 2017, briefs have been filed in the appellate court.

Entertainment Law Update Episode 81 - Tamera Bennett and Gordon Firemark

entertainment law update episode 81 tamera bennett gordon firemark #podcast #entertainmentlaw

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen to the Entertainment Law Update Podcast or subscribe in iTunes.

In Episode 81 of the Entertainment Law Update Podcast, Tamera and Gordon offer an unscientific take on the top copyright, trademark, film, TV and other entertainment law cases of the year. The round-up includes:

These cases and much more on this episode of the Entertainment Law Update Podcast.

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.


Entertainment Law Update Podcast - The Top Cases and News of 2016

music-lawyer-tamera-bennett-trademark-entertainment-law-update-podcast-year-in-review-2016

Listen to Dallas-area music lawyer Tamera Bennett and Los Angeles film lawyer Gordon Firemark discuss the latest entertainment law issues on the Entertainment Law Update Podcast.

Click the arrow below to listen to the Entertainment Law Update Podcast or subscribe in iTunes.

In Episode 80 of the Entertainment Law Update Podcast, Tamera and Gordon offer an unscientific take on the top copyright, trademark, film, TV and other entertainment law cases of the year. The round-up includes:

Please leave us listener feedback at the iTunes store. Your comments will help other folks find our podcast.

EntLaw Update does a phenomenal job of keeping you current on issues of interest to anyone working at the intersection of law and media. Hosts Gordon Firemark and Tamara Bennett are personable and engaging, presenting stories in well-organized fashion that often leaves room for humor. As an avid consumer of law podcasts, I have to say this one is my favorite — if you need a reminder that the law isn’t *always* boring, Entertainment Law Update is what the doctor ordered!
— Michael

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