Entertainment lawsuit

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.

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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.

2015 Top Cases from Entertainment Law Update Podcast


Click the arrow below to listen to Episode 69.

California film/TV lawyer Gordon Firemark and Dallas music/trademark lawyer Tamera Bennett, wrap up and count down the top entertainment law cases of 2015 on Episode 69 of the Entertainment Law Update Podcast.

The countdown includes:

Santa Claus is Coming to Town Copyright Grant Termination ruling
Happy Birthday Copyright - Case Settled
Lenz v. Universal - Dancing Baby - Must Make Fair Use Determination
Blurred Lines Case - on Appeal
Innocence of Muslims Ruling (and possible  en banc review)
Pre ‘72 Copyrights – Turtles - Class Action claimants settle without the Turtles
Copyright Office Music Licensing Study – the history and the future
Point Break Live ruling - stage performance (not the new movie)
Monkey Selfies

Entertainment Law Update Podcast Episode 54

Image Phillipe Put CC2.0

Image Phillipe Put CC2.0

Click the arrow below to play the Entertainment Law Update Podcast

Monkeys, athletes and fictional race car drivers make the cut for Episode 54 of the podcast for entertainment lawyers. LA Film and TV lawyer Gordon Firemark and Texas Music and Trademark attorney Tamera Bennett bring you the latest in entertainment law, copyright and trademark lawsuits on the Entertainment Law Update podcast. Listen in and feel free to leave some feedback.

Image via CC2.0 license.

Entertainment Law Update Podcast - Episode 47

Film/TV lawyer Gordon Firemark and Copyright/Trademark lawyer Tamera Bennett cover a "Motley Crew" of topics this month including trademark, copyright, film and tv legal issues surrounding the "Counting Crows," "Raging Bull," "Insane Clown Posse," and "Sherlock Holmes" .... to name a few.  Click here to listen.


Sherlock Holmes - Some Copyright, Some Not

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”

Read more about the history of the  dispute and ongoing trademark issues here.

Hear film lawyer Gordon Firemark and copyright lawyer Tamera Bennett discuss the case on the Entertainment Law Update Podcast Episode 47 and Episode 43.

Top Trademark/Copyright/Entertainment Law Posts of 2013

As we say goodbye to 2013, it's always fun to look back and see what our readers enjoyed. There's a great mix of trademark, copyright and music publishing cases. Most visited posts in 2013 (no matter original post date):

Number 5:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion Number 4:  Do I Need A Music Lawyer? Number 3:  Music Publishing: A Good Investment Number 2:  New Recording Artist Checklist: What Every Artist Should Think About Number 1:  Bikram Yoga Protected by Trademark NOT Copyright - It's Hot

and a little variation on a theme - the Most visited posts that were originally posted in 2013:

Number 5:  Drybar vs Blow Dry Bar - Trademark for Blow Drying Hair Number 4:  Sherlock Holmes, Elementary, Copyright Protection and Trademarks Number 3:  Duck Dynasty - What Contract Clause Did Phil Violate? Number 2:  Johnny Football vs Juanito Futbal Trademark Likelihood of Confusion Number 1:  Bikram Yoga Protected by Trademark NOT Copyright - It's Hot

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Malcom X Heirs Sue for Copyright Infringement and Injunction

The Heirs of Malcom X sue to stop the publication of key portions of Malcom X's diaries.  While the diaries were donated to the New York Public Library, the family argues no copyright transfer has occurred to allow defendant, Third World Press, to print all or any portion of the diaries.    The family, via the entity X Legacy, LLC, seeks emergency injunction relief to stop the publication.  To add to the confusion, one of Malcom X's daughters is an editor of the project and seems to be defending the actions of Third World Press. Donating of papers to a library or other organization is a common practice of high-profile individuals.  The act of donation does not constitute a transfer of the copyright.  At a minimum, in accordance with the terms of the donation or loan agreement, the donee may have the ability to display the materials for research purposes or public review.

At this stage in the litigation process, it is unclear on what grounds Third World Press, LLC is claiming they have the right to reproduce and distribute the diaries.

Entertainment Law Update Podcast - Gordon Firemark and Tamera Bennett

Film lawyer Gordon Firemark and music attorney Tamera Bennett co-host the Entertainment Law Update podcast.  Episode 44 highlights include the "Happy Birthday" public domain litigation; Marvel comics copyright termination lawsuit; and Harper Lee's resolution on ownership of "To Kill A Mockingbird."  Read more and listen here.

Entertainment Law Update Podcast 42 - For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues. Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.

Stone Temple Pilots Trademark and Band Dispute

The three remaining original band members of the Stone Temple Pilots sued expelled member Scott Weiland in May 2013 claiming breach of their written partnership agreement, breach of fiduciary duty and trademark infringement. Weiland was voted out of the group in February 2013.  The four group members operated under a written band partnership that allows a partner to be ousted  for numerous reasons, including not making the band a top priority.  The complaint provides a look at the various ways in which Weiland was not putting the band first and how he was subsequently "sabotaging" the band's tour and new album release.

Weiland subsequently contersued the band accusing the members of  conspiracy to oust him and demanding the band/partnership be dissolved.

There are four federal trademark registrations for STONE TEMPLE PILOTS owned in the name of the Stone Temple Pilots partnership and listing the four original partners, including Weiland, as the partners.  Might we see some issues at the USPTO regarding those registrations and who is the proper party to maintain ownership?

Here's the Complaint filed by the Stone Temple Pilots vs Weiland.

More to come as this case progresses.  We always love a good band name dispute.

"When The Band Gets Divorced - Mediating The Band Partnership Dispute"

"When The Band Gets Divorced - Mediating The Band Partnership Dispute"1 hr CLE pending

Join attorney/mediator Tamera Bennett at the Belo Mansion at Noon on Wednesday, March 27, 2013 for a discussion on common issues band members mediate when a member departs and/or the band dissolves.

We'll be taking a look at the "Sugarland" partnership dispute, the recent "En Vogue" dispute, as well as the "J Geils Band" dispute and applying those fact patterns to structuring a successful mediation for your client.

Dallas Bar Association Belo Mansion 2101 Ross Avenue Dallas, Texas 75201 214-220-7400