Apple’s iCloud launches and faces trade mark challenge
Copyright , Internet , Trade Mark / July 2011
USA

COPYRIGHT / TRADEMARK Internet Apple head honcho Steve Jobs has taken a break from his medical treatment and launched the company’s new music offering, the iCloud, at the Worldwide Developers Conference in San Francisco. Fully licensed by all four major record companies and publishers Billboard cited sources this weekend confirming that the split of revenues generated by the iCloud service will be 58% to the labels, 12% to the publishers and 30% to Apple. It will be interesting to see if Apple’s digital locker service will have more or less limitations compared to those launched by Amazon and Google, who decided to go without licenses – and perversely therefore don’t have any content owners to placate – and on first looks it appears that iCloud doesn’t actually allow you to store music in the cloud. In separate news, it seems all is not well with Apple’s new names though. In iCloud news, a company called  In a iCloud Communications, LLC,  a Phoenix-based voice over IP provider, has claimed trademark infringements against Apple over the use of the name iCloud in a law suit filed in the US District Court in Arizona and New York book publisher has filed a lawsuit…

Vandals take on Variety
Artists , Trade Mark / May 2011
USA

TRADE MARK Artists Hollywood trade newspaper Variety has lost in its attempt to pursue a trademark claim in Delaware against the punk band The Vandals. This is just the first battle in the fight and whilst it has gone in favour of the band, it is not a decision on the substantive matter in the case – just the forum where the case will be heard. The case will now move to a California federal court, since Vandals bassist and lawyer Joe Escalante, who is representing the band in the lawsuit, is based in Los Angeles. The case goes back to a 2004 album by the band, their 10th, titled “Hollywood Potato Chip,” which posed the band’s name in lettering on the cover quite similar to the trademarked Variety logo. Reed Elsevier, Variety’s parent company, sent a cease-and-desist letter and entered into a settlement with the band, which agreed to change the cover art. The agreement stipulated that band members would have to pay $50,000 plus attorneys fees if the group ever reneged. It now seems that the offending image had popped up again on the band’s website and that of their label Kung Fu Records. The band claimed it…

Hendrix dispute rumbles on
Image Rights , Trade Mark / March 2011
USA

TRADE MARK / IMAGE RIGHTS Artistes A Las Vegas company co-owned by Leon Hendrix, brother of rock icon Jimi Hendrix, has succeeded in Trade Mark litigation with the company that licenses Hendrix music and trademark – companies controlled by Leon Hendrix’s sister by adoption Janie Hendrix. U.S. District Judge Thomas Zilly said that a 2008 Washington state law that would have provided a “right of publicity” to Experience Hendrix LLC and Authentic Hendrix LLC was unconstitutional. The ruling appears to strengthen the rights of the Las Vegas company — formerly known as HendrixLicensing.com, doing business as Hendrix Artwork and Hendrixartwork.com — to sell Hendrix merchandise. The Jimi Hendrix licensing companies control the Jimi Hendrix music, recordings and artistic properties and have federally-registered trademarks including rights to the phrases “Jimi Hendrix” “The Jimi Hendrix Experience” and certain logos. In 2009, Janie Hendrix’s companies sued Pitsicalis, HendrixLicensing.com, Hendrix Artwork and Hendrixartwork.com in federal court in Seattle, alleging trademark infringement because those companies were using the Hendrix name and selling Hendrix-oriented merchandise, allegedly in a manner “designed to capitalize on the goodwill and source recognition associated with the Hendrix family companies’ marks and rights.” Merchandise includes artwork, posters, t-shirts and home decor items….

Glasgow pantomime nurse in breach of Geneva Convention
Trade Mark / February 2011
UK

TRADE MARK Theatre A Glasgow theatre has had to change a nurse’s pantomime costume after being told it the use of the Red Cross emblem was breaking the Geneva Convention Act of 1957. The dress worn by Nurse Poltis in the Pavilion Theatre production of The Magical Adventures of Robin Hood, starring Jim Davidson as Robin and Dean Park as Nurse Poltis, originally had red crosses on the hat and tunic but these were changed to green crosses after the British Red Cross informed the theatre it was breaking the law and could face prosecution. A spokesman for the humanitarian organisation told the BBC “We have no desire to be the villains of the pantomime or to appear heavy handed, but we do have a very serious obligation to protect the Red Cross emblem … the emblem is a special sign of neutrality and protection recognised by all sides during armed conflicts” adding “Misuse of that emblem – even when done in an innocent and light-hearted manner – has to be addressed. Repeated and widespread misuse of the Red Cross emblem could dilute its neutrality and its ability to protect”. http://newslite.tv/2011/01/07/pantomime-costume-broke-geneva.html http://www.legislation.gov.uk/ukpga/1989/52/pdfs/ukpga_19890052_en.pdf http://www.bbc.co.uk/news/uk-scotland-glasgow-west-12135540

Rammstein win damages for ‘appearance’ claim
Artists , Trade Mark / February 2011
Germany

TRADE MARK Artists Rammstein have won 45,000 euros in damages from Sony Music Germany in a Berlin court over claims that the German heavy metal band appeared on 2007 album by Finnish band Apocalyptica, which was released on the now defunct Sony subsidiary Gun Records. Sony’s marketing for the album, ‘World’s Collide’, claimed that the band Rammstein appeared on the record. In reality only one member of the band, Rammstein frontman Till Lindemann, guested.  Rammstein argued that the advertising infringed their trademark in the Rammstein name, because it was used without their permission. CMU Daily 11th January 2011 www.thecmuwebsite.com  

Coca-cola fail in bid to regain Five Alive URL
Internet , Trade Mark / October 2010
UK

TRADE MARK Internet The Coca-Cola Company has failed in an action  against  a UK individual who had registered the domain namewww.fivealive.co.uk . The case was heard by an independent expert under Nominet’s Dispute Resolution Service (DRS) Policy.  The respondent in this case was an individual named Paolo Ciuffa and the domain name was registered in his company’s name, Bo Cat, in 2004.  Coca-Cola argued that Mr Ciuffa had no legitimate interest in the domain name and they argued that the only reasonable conclusion to reach regarding the registration of the domain name was that Mr Ciuffa intended to capitalise on their goodwill and divert customers away from them.  They said the domain name was disrupting their legitimate business interests and amounted to an “abusive registration”.  According to Nominet’s DRS Policy, an abusive registration is one that takes unfair advantage of, or is unfairly detrimental to the complainant’s rights.  In his response, Mr Ciuffa claimed that he had registered the domain name with the sole intention of representing and promoting the music artist MC Five Alive.  He provided evidence in the form of a MySpace link and recent flyers from events which MC Five Alive had performed at.  He denied that it was an “abusive registration”. The appointed…

Bieber and Gaga no amused by comics, and sex dolls
Artists , Image Rights , Trade Mark / October 2010
UK

TRADE MARK / IMAGE RIGHTS Artists A comic book version of Justin Bieber’s life has irked the diminutive star. Unlike recently announced bio-pic film and photo-book projects, this output isn’t officially sanctioned. Now the comic’s publisher, Bluewater Productions, is being threatened with legal action by a lawyer representing both Bieber and Lady Gaga, who also had her life turned into a comic strip by the company back in June. According to WENN, lawyer Kenneth Feinswog has served the company with a cease-and-desist letter, threatening to take the matter to court, but the publisher is refusing to cease production, claiming it is well within its rights to produce the books. Bluewater’s Darren G Davis said: “We are 100% within our first amendment rights. We knew our rights on this before we jumped into the biography world. These are 100% biographies on their lives. We reach out to all the celebrities and some choose to work with us and some do not. If they do choose to work with us, we donate ads and money to a non-profit [organisation] of their choice. We offered the same deal to Bieber’s people”. Lady Gaga has also threatened legal action against a sex doll company for…

AEG and Live Nation join Universal in fight against counterfeit merchandise
Live Events , Trade Mark / September 2010
USA

TRADE MARK Live events industry AEG Live and Live Nation have joined Universal Music’s merchandising company Bravado lead in launching legal actions in the US courts with so-called ‘John Doe lawsuits’ in a bid to force law enforcement officials to crack down on illegal merchandisers. Universal took the lead with actions to protect Lady Gaga official merchandise at venues where the star vas playing, accusing potential bootleggers of infringing their trademark rights. The aim of the lawsuit was to give the police the power to seize counterfeit goods being sold by bootleg merchandisers – and even to obligate them to do so. AEG Live have now filed a similar John Doe lawsuit ahead of their Mile High Music Festival in Denver, while Live Nation went down a similar route to stop bootleg Ozzfest merchandise being sold around the Ozzy Osbourne festival. http://newsblog.thecmuwebsite.com/post/US-music-firms-sue-John-Doe-to-tackle-merch-bootleggers.aspx http://ipkitten.blogspot.com/2010/08/letter-from-amerikat-no-trade-mark.html

Truth in Music laws take a knock in court setback
Artists , Trade Mark / September 2010
USA

TRADE MARK Artists The State of New Jersey has been handed a setback in a case involving the Truth in Music Act, though advocates of the law said Monday that the ruling would not materially affect its effectiveness.  The Act is designed to protect both original band members and the audience against touring acts using heritage band names but containing no original members or no connection with original line ups. The case stems from 2007, when then New Jersey Attorney General Anne Milgram sought a restraining order to force the groups to call themselves “tribute” bands when they performed in Atlantic City. The groups sued, and the state eventually conceded in U.S. District Court that it had enforced the law incorrectly.  In the federal case, the state Attorney General’s Office contended that the unregistered trademarks held by Live Gold, the promoter for the groups performing as the Platters and Coasters, prevented them from performing unless they billed themselves as “tribute” bands. U.S. District Judge Dickinson Debevoise rejected the argument and ruled that an unregistered trademark, if found valid, had the same rights as a trademark registered with the U.S. Patent and Trademark Office. Whilst neither of the bands who went…

Zappanale win on appeal, Ozzy settles with Tony
Artists , Live Events , Trade Mark / August 2010
EU
Germany
USA

TRADE MARK Artists, live events industry Frank Zappa’s family have lost a trade mark case on appeal in Germany where the Oberlandesgericht Düsseldorf has ruled against the Zappa Family Trust (20 U 48/09) in a trade mark infringement action against a group of Zappa fans. The Trust, which owned the ZAPPA Community trade mark, objected to the annual “Zappanale“, a meeting of Zappa fans which involved many uses of the Zappa name and image. However it appears that the Trust had used the word “Zappa” only as part of the “official” Zappa website www.zappa.com, which operated from the US. According to the court, reversing the decision of the Landgericht, this was not genuine use of the trade mark in the EU under Article 15(1) of the Community Trade Mark Regulation. The court added that the use of a mark in a domain name may be sufficient to constitute genuine use in principle, but that here the public would consider the use of the word Zappa as a general descriptive reference, not as a reference to the trade mark owner In other trade mark news, Ozzy Osbourne has reportedly reached a settlement with Tony Iommi over who owns the name Black Sabbath. Iommi, Black…

Absolut and Absolute settle name dispute
Trade Mark / June 2010
UK

TRADE MARK All areas Absolute Radio has settled its trademark dispute with Absolut vodka. The vodka company had objected to Virgin Radio being rebranded with the Absolute name in 2008, despite the difference in spelling and the different sectors the two companies operate in. The drinks company said they believed there could be confusion between their two brands, and also pointed to their music sponsorship activity and an Absolut branded music website as an area where the two firms had operations in common. Trademark infringement and passing off litigation followed. But both companies confirmed an out of court settlement had been reached this morning. The terms of the deal aren’t known, but Absolute Radio boss Clive Dickens said: “Absolute Radio is pleased with this settlement which will see us continue to build our music radio brand and advance our position as one of the leading commercial radio networks in a digital age”. http://www.guardian.co.uk/media/2010/apr/29/absolute-radio-absolut-vodka

Counterfeit T-shirt mastermind jailed for 15 months
Trade Mark / May 2010
UK

TRADE MARK Merchandising Mark Blenkiron of Norwich has been sentenced to 15 months imprisonment after being found guilty of producing and selling counterfeit T-shirt for artists including Queen, Led Zepplin and Guns ‘N’ Roses.  Blenkion was arrested after Harringey Trading Standards raided his warehouse in North London and discovered a total of 8,600 items with a retail value in excess of £43,000 (E47,000). The raid was a result of information provided by security and intelligence firm Iridium Consultancy. Investigations showed he had ordered 200,000 blank T-shirts from one supplier alone. A Proceeds of Crime Act investigation has begun to recover profits Blenkiron made from his business, Shock Horror Limited. Blenkiron pleaded guilty to the charges at London’s Wood Green Crown Court. http://www.haringeyindependent.co.uk/news/5058487.Rock_T_shirt_bootlegger_jailed/

Ozzy sues for a share of Sabbath, Keisha sues to block new babes
Artists , Trade Mark / April 2010
UK
USA

TRADE MARK Artists Ozzy Osbourne is taking former bandmate Tommy Iommi to court over the rights to the Black Sabbath name. Iommi filed for sole ownership of the mark in the US last year and Iommi alleges that Ozzy Osbourne waived his rights to the band’s moniker when he left the band in 1979, which Ozzy counters by saying that he enhanced the band’s ‘quality control’ when he rejoined Sabbath in 1997. In the pop world, Keisha Buchanan is to commence legal proceedings against the girl group she founded, the Sugarbabes, seeking to prevent the current line-up using the name. The word SUGARABES has not yet been secured as a European Community Trade Mark, but an application to register it as a CTM was published just three weeks ago, the applicant being Keisha’s erstwhile colleague, and co-founder-member Mutya Buena. The HolyMoly website seemed to think that all three original members – Mutya, Keisha and Siobahn Donaghy are planning to reform and wish to stop the current line up, which features no original members, using the name. http://ipkitten.blogspot.com/2010/03/monday-miscellany.html http://www.metalhammer.co.uk/news/ozzy-and-iommi-to-face-off-in-court

Fake merchandise operator jailed
Trade Mark / January 2010
UK

TRADE MARK Merchandising Two men have received prison sentences after pleading guilty to trading in counterfeit merchandise for artists including The Rolling Stones, Green Day, Artic Monkeys, AC/DC and Franz Ferdinand.The Harrow Crown court heard that George Seng Lai Lau and Marios Kyriacou’s business, Choices Jewellery Ltd, had twice been raided by Brent and Harrow Trading Standards officers: on the first occasion in June 2007 more than 158,000 items were seized including branded hats, badges, T-shirts, bags and lanyards; when Trading Standards returned over a year later in August 2008 the warehouse had been re-stocked and a further 49,096 items were seized. Lau, the sole director of the company, was sentenced by Judge Madge to 21 months custody. Kyriacou, a senior employee, received a seven month sentence, suspended for two years a an curfew order with electronic tagging. A Proceeds of Crime Act investigation has commenced. Live UK  December 2009  Issue 119

US Police seize counterfeit gods worth $26 million
Record Labels , Trade Mark / January 2010
USA

TRADE MARK Merchandising, record labels The partners of the National Intellectual Property Rights Coordination Center (IPR Center), state and local law enforcement and the Government of Mexico announced the seizures of millions of dollars of counterfeit products in Operation Holiday Hoax, a week of joint law enforcement activities targeting counterfeiters and trademark pirates, their distributors, associates, shippers, warehouses, salesmen and vendors in the United States and Mexico. More than 708,250 products were seized in 41 locations around the United States. Seven persons were arrested and charged in New York and Texas. Mexico seized 255 tons of counterfeit products during parallel operations. In Houston, more than 33,000 items were seized with an estimated value at more than $4.3 million. During Operation Holiday Hoax, which ran from December 8th 2009 to December 13th, U.S. Immigration and Customs Enforcement (ICE) agents and other federal agents and officers in 41 U.S. cities worked in partnership with local law enforcement agencies targeting small businesses, stores, swap meets, flea markets, shippers and vendors involved in the distribution of counterfeit products.  The items seized included counterfeit Christmas ornaments, toys, DVDs, CDs, clothing, footwear, handbags, sports clothing, perfume, stationery, cosmetics, hygiene products, electronics, phones and pharmaceuticals. Early estimates…

Pistols at dawn in ice cream wars
Artists , Trade Mark / November 2009
UK

TRADE MARK Artists The Sex Pistols are threatening to sue an ice cream maker who are selling an ice cream cocktail called The Sex Pistol, and who are using the strapline ‘God Save The Cream’, in some instances displayed over a picture of the queen which would appear mimic the Jamie Bell’s iconic cover for the Pistols ‘God Save The Queen’ 7” vinyl release. The company, Icecreamists, have set up a stall in Selfridges, and describe their ice cream based products as being “more Sid & Nancy than Ben & Jerry”. The Sex Pistol ice cream includes a shot of absinthe. The ‘God Save The Cream’ slogan is used on the stall as well as on ads and the company’s website. They also use a snippet of the national anthem played on an electric guitar. According to the Guardian, lawyers representing the surviving Sex Pistols have sent a letter to Icecreamists demanding they stop using the Pistols-related strapline and imagery. They are also requesting damages to compensate the band for the “passing off and copyright infringement” they allege the ice cream firm have committed, based on the sorts of money the band could demand for an official licensing deal. The icreamists…

Google win’s the first battle of the AdWords
Internet , Trade Mark / October 2009
EU

TRADE MARK Internet Google has won an important first victory it it’s battle sell ‘AdWords’ in it’s search engines. Adwords are basically brand names, often registered trade marks, which Google sells to competitors of those brands so their own product would be highlighted when a search is made of the advert – for example if a user entered ‘Rolex’ into the search engine, a competitor watch maker may have purchased the Adword and their own luxury watch would be featured alongside Internet search results for Rolex. Louis Vuitton and others have been fighting such advertising after makers of imitation products “piggybacked on those brands in online searches to attract customers”. Now the Advocate General Poiares Maduro, in his opinion to the European Court of Justice, suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. He highlights that the use of the trade marks is limited to the selection of keywords which is internal to AdWords and concerns only Google and the advertisers. When selecting keywords, there is thus no product or service sold to the general public. Such a use cannot therefore be considered as being a…

Ozzy looks for a share of the Sabbath mark
Artists , Trade Mark / July 2009
USA

TRADE MARK Artists The IPKat reports that 60 year old Black Sabbath singer Ozzy Osbourne  is suing the band’s guitarist Tony Iommi over royalty payments. Osborne alleges that Iommi has falsely claimed entitlement to the sole rights to the band’s name, thus losing him royalties from merchandise sales. An unspecified sum is sought by way of damages and lost profits, as well as a declaration is a half-owner of the trade mark.  Iommi, who registered the Black Sabbath trade mark in the US in 2000, denies liability and says Osbourne legally relinquished rights to the band’s name in the 1980s. Osbourne is reported as saying he believed all four original members of the band should share Black Sabbath’s name equally. His lawyer adds that even if he did agree to relinquish his rights, he took a major role in the band’s direction and success after rejoining it in 1997. The IPKat promises to keep an eye on this action, the latest an a long line of disputes between elderly band members who have metamorphosed from rock icons into cultural antiquities The trade mark can be seen here http://www.ipo.gov.uk/ohim?ohimnum=E3727369 http://ipkitten.blogspot.com/2009/06/who-owns-black-sabbath-trade-mark.html

Fender fail to register guitar shapes in USA
Trade Mark / June 2009
USA

TRADE MARK Technology The guitar manufacturer Fender, has failed in it’s appeal to register the shapes of three of its guitars as trade marks. The US Patent and Trade Mark Office held that that the shapes of the Stratocaster, Telecaster and Precision Bass guitars had been widely used by other guitar manufacturers for so long that Fender could no longer claim to hold rights in the shapes. The case was raised by seventeen guitar manufacturers, represented by lawyer and bassist Ron Bienstock, who is reported to have come across Fender’s trade mark application in 2003 whilst completing due diligence for a client. In a decision of 75 pages, with over twenty thousand pages of evidence, it was held that Fender had failed to acquire distinctiveness in the shapes through their use in the guitars. From http://www.shepwedd.co.uk/knowledge/article/986-2407/high-profile-music-disputes-create-feedback/email  Shepherd & Wedderburn’s Intellectual Property e-bulletin 6th May 2009.

Frank Zappa’s window loses Zappanale case
Live Events , Trade Mark / March 2009
Germany

TRADE MARK Live events industry The widow of Frank Zappa has failed to stop a German festival using her husband’s name and image. As previously reported, Gail Zappa and her family trust had sued the owners of a German Frank Zappa fan club over their annualZappanale Festival, demanding that they stop using the family’s name and remove a bronze sculpture of the avant-garde musician from the town where the fest takes place. They also sued for 250,000 euros in damages. The court in Dusseldorf has thrown out Zappa’s case, ruling that organisers of Zappanale can continue to use that name, plus the late musician’s image in its branding and on its merchandise holding that such use did not violate any of Gail Zappa’s rights. The widow’s case was seemingly weakened because she could not prove she used Zappa’s name and image herself in Germany, and also because she had known about the event since its launch in 1990 (three years before her husband’s death) and had only chosen to take action in 2008. Thomas Dippel, who runs the fan club who promote the festival, told reporters: “We have always been certain that we have the older rights. We have also patented (trade…

Warners Brothers fail to enchant India’s High Court over Hari Puttar
Trade Mark / November 2008
India

TRADE MARK Film, television Hari Puttar hit cinemas last month in India and the producers of the film also walked into the High Court after Warner Brothers accused the makers that they ‘unfairly sought to confuse consumers and benefit from the well-known and well-loved Harry Potter brand. Justice Reva Khetrapal disagreed with the US film giant concluding that the film going public were smart enough to make up their own minds between the ‘Comedy of Terrors’ that is Hari Puttra and the seven series Harry Potter books about the boy wizard saying that as the Harry Potter books catered for an educated person ‘such a person must be taken to be astute enough between a Harry Potter film and another titled Hari Puttar. In fact it seems Warners should have saved their money as the film has gad dreadful reviews in India and the ‘Home Alone’ plot has left the few paying customers who have gone to see the film disappointed. The Observer 28 th September 2008 http://news.bbc.co.uk/1/hi/world/south_asia/7628948.stm

Absolutely fabtastic – new Virgin Radio name sails into rocky water
Trade Mark / November 2008
India
UK

TRADE MARK Broadcasting In June the Times of India Group brought Virgin Radio from SMG for £53.2 million and had to rebrand the rock radio station in India because they compete with Richard Branson’s Virgin Group in that country and as Branson still holds the rights to the name Virgin Radio in the UK, The Times Of India’s rebranded their new UK radio company as Absolute Radio (as part of its new management company, Absolute Radio International). But V&S (Vin & Spirit) the proprietor of Absolut (the trade mark of Swedish vodka) was less than impressed and has commenced proceedings against the rebranded Virgin Radio, Absolute Radio. As well as the vodka trade mark V&S owns the Absolut TRacks music project, and claims Virgin Radio is infringing its trade mark and passing its services off as those of V&S. A spokeswoman for V&S stated, “The reason for this is that we consider there is a risk of confusion. We have a well known brand and there is an obvious risk of confusion between Absolut vodka and Absolute Radio. We have filed a complaint and now we go into the legal process.” http://www.guardian.co.uk/media/2008/oct/10/commercialradio-radio

2006 Fifa trademarks cancelled for lack of distinctive character
Trade Mark / September 2008
EU

TRADE MARK All areas 2006 Fifa trademarks cancelled for lack of distinctive character: OHIM Cases R 1466/2005-1, R 1467/2005-1, R 1468/2005-1, R 1469/2005-1 and R 1470/2005-1. All The Board of Appeal of the OHIM has allowed appeals brought by Ferrero oHG mbH against the refusal of the Cancellation Division to cancel marks belonging to the Fédération Internationale de Football Association (Fifa). The five marks in dispute have now dated and are of little commercial value as the event in question, the 2006 football World Cup, has passed. However the case sets an important precedent. The marks are: WORLD CUP 2006 (referring to the football world cup); GERMANY 2006 (the event taking place in Germany); WM 2006 (WM is Weltmeisterschaft, “World Cup” or World Championship” in German); WORLD CUP GERMANY; WORLD CUP 2006 GERMANY. The grounds upon which the registrations were challenged were that the signs in question were descriptive and lacked distinctive character. http://oami.europa.eu/search/legaldocs/la/en_BoA_Index.cfm?CFID=2933140&CFTOKEN=92532803

Use of Doors name needs all band members to agree – dead or alive
Artists , Contract , Trade Mark / September 2008
USA

TRADE MARK/CONTRACT Artists The Calilfornia Supreme Court has decided that two surviving members of the 70s group, The Doors, Raymond Manzarek And Robert Krieger, who wanted to continue to perform under that name and then under the name Doors of the 21 st Century can use neither name. The original band featured John Densmore, Ray Manzarek, Jim Morrison and Robert Krieger but after the Manzarek/Krieger tour grossed $8 million and used photographs of the original Doors in publicity Densmore and the family of Jim Morrison and his estate joined forces to prevent the use of the name. In reports, Densmore states he is simply fulfilling the wishes of Jim Morrison, having refused other lucrative offers for commercials and other use. The IPKAt reports that this is possible due to a “veto power” common in music contracts of the 1960s which requires all members of The Doors to be unanimous in any business agreements. As a result, each band member has a vote and the Morrison estate the fourth. Densmore and the families claimed that if the pair continued to use the name, The Doors of the 21st Century, it would compromise the band’s legacy. The Los Angeles Superior Court agreed…

Drifters victory over former band members, tour, tour manager and agent
Artists , Trade Mark / August 2008
UK

TRADE MARK Artists The Treadwell family, who have owned the Drifters name since 1953, have succeeded in a High Court action against a group of former band members using the band’s name. The Treadwell family, who have legally controlled the Drifters since 1953, served a writ in December accusing four musicians, their former UK tour manager Philip Luderman and their former agent Mark Lundquist of “passing off” a UK group as the real thing and thus infringing the Drifters’ trademark. The action ended with a settlement but representatives of the band say that the legal victory confirms the ownership of the UK and European trademarks of The Drifters name, as well as removing the ambiguity surrounding the band’s identity. This court order prohibits former Luderman and Lundquist, plus four former employees, from using the Drifters name again and the settlement has been agreed over prior unauthorised use of the name. Tom Frederikse from Clintons solicitors, a regular contributor to this site who represented the Treadwells said “The Drifters’ history is as interesting as it is unique, but there is one theme that’s constant – the name Treadwell. This is a moral victory for the Treadwells and we are delighted that…

US court finds that eBay is not liable for counterfeits sold on it’s site
Trade Mark / August 2008
USA

TRADE MARK All areas A US District Court has decided that the internet auctioneer eBay had not infringed Tiffany’s trade marks in failing to prevent fake Tiffany goods to be sold through its site. According to the New York Times, the court found that it was the responsibility of trade mark owners, and not online retailers, to police the online sites for infringers. The US decision runs counter to the emerging trend it Europe, where eBay has been found to have infringed in both France and Germany. Judge Richard J Sullivan in the Manhatten Federal District Court said “Tiffany has failed to demonstrate that eBay knowingly encouraged others to dilute Tiffany’s trademarks,” in his 66-page decision. “Rather, to the extent that eBay may have possessed general knowledge of infringement and dilution by sellers on its Web site, eBay did not possess knowledge or a reason to know of specific instances of trademark infringement or dilution as required under the law.” http://www.nytimes.com/2008/07/15/technology/15ebay.html?em&ex=1216267200&en=4dcc0c8323ecf63b&ei=5087%0A See Music Law Updates July 2008 for a report on the position in France – French courts holds eBay liable for sale of counterfeit goods

French courts holds eBay liable for sale of counterfeit goods
Internet , Trade Mark / July 2008
France

TRADE MARK Internet Two court decisions in France have left eBay reeling and the online commercial community nervous of further actions. Firstly a French court ruled that eBay must pay Hermes 20,000 euros for allowing counterfeit Hermes bags on its site. The court found that “By selling Hermes bags and branded accessories on the eBay.fr site, and by failing to act within their powers to prevent reprehensible use of the site… [both eBay and the seller] committed acts of counterfeiting and imitation of French brand names … to the detriment of Hermes international.” The court ordered that eBay must also publish the ruling on its homepage. Counsel for Hermes argued that eBay was more than a mere passive intermediary, instead: “eBay is an active player in the transaction because not only does it offer a number of services to improve the sale, but when it does not work well enough or fast enough, they intervene with the client…They are perfectly informed of the transactions since they take a percentage cut.” The IPKat adds that that it isn’t sure about the ruling adding that it “doubts whether someone at eBay really has knowledge of every transaction that is taking place” and that “forcing someone to…

Myspace domain can be kept by original owner
Internet , Trade Mark / June 2008
UK

TRADE MARK Internet The Nominet Dispute Resolution Service Appeals Panel has ruled that the myspace.co.uk domain – which was registered by Total Web Solutions before the now very popular MySpace service came into existence did not after all have to be turned over to MySpace Inc, owners of the social networking site. Total Web Solutions registered myspace.co.uk in August 1997 in order to provide its clients with a cheap and easy homepage and email. On or before July 2004 myspace.co.uk, which was no longer in demand for its original purpose , was “parked” with Sedo, a company that targets advertising links on unused domains which In 2005, following the growing popularity of MySpace, began serving Total Web Solutions’ domain with advertisements for services such as “MySpace Friend Adder”. The appeal panel dismissed the assertion by MySpace Inc that it was entitled to the disputed site on the ground that it was entirely descriptive of its business. Nor did it consider the earlier registration to be abusive. The panel added: “To date experts and Appeal panels have reasonably consistently taken the view that if a registrant acquires a domain name in advance of the coming into existence of the complainant’s rights,…

Zappa Estate take on Zappanale Festival
Live Events , Trade Mark / May 2008
Germany

TRADE MARK  Live events  The future of a music festival set up in honour of Frank Zappa is in doubt following a lawsuit brought against the organisers by Zappa’s widow Gail. The Zappanale festival has been running in the German village of Bad Doberan since 1990 as a way of celebrating the records of the avant-garde musician whose records had previously been illegal under the East German Communist regime. Gail Zappa, who formed the Zappa Family Trust in 2002, is demanding that she has a say in which Zappa tribute acts play the event, that the festival’s logo – Frank Zappa’s trademark moustache and goatee – be scrapped, that a statue of the musician in the village be pulled down and that the organizers pay £200,000 for the right to use the Zappa name. Festival organisers counter by saying that they registered the Zappanale mark almost 20 years ago. The Dusseldorf court will consider the dispute. From CMU Daily  http://www.cmumusicnetwork.co.uk

“Mr Spicy” trade mark case clarifies law on keyword advertising
Trade Mark / May 2008
UK

TRADE MARK All areas ARTICLE  By Laurie Kaye & Yasmin Joomraty, Laurence Kaye Solicitors Trade mark law is really beginning to get its head around the workings of search engine and the Internet. As you’ll read, a search engine isn’t regarded – at least for UK trade mark law purposes – as “using” (and so infringing) a trade mark when a trade marked term is displayed by a search engine as a sponsored link. The case only concerned the position of the search engine. It didn’t look at the position of the advertiser who bought the search term. Here’s the detail. A recent UK High Court decision, Wilson v Yahoo! UK Ltd, has clarified the law on keyword advertising. The use of keywords for sponsored search results does not amount to trade mark infringement. As such, advertisers who sponsor links prompted by search terms are not at risk of infringing a third party’s trade mark, even if the search terms entered (and subsequent keywords displayed) form all or part of that third party’s trade mark. The claimant in this case, Mr Wilson, owned a community trade mark (CTM) for “Mr Spicy.” When users of Yahoo!’s search engine entered the search terms…

Beach Boys settle dispute over name
Artists , Trade Mark / April 2008
USA

TRADE MARK Artists The surviving members of the beach boys (Brian Wilson, Al Jardine and Mike Love) have settled a decade long dispute over the use of the “Beach Boys” mark which the original members joint company (Brothers Records) granted to Love in 1998. The agreement was reached after two days of talks mediated by a Los Angeles superior court judge and covers the payment of Love’s outstanding estimated $2 million legal bills following his successful claims and the use of the band’s name in the live environment. The Guardian 22 March 2008 See past details of Love’s action against Wilson in Music Law Updates December 2005 below: Beach Boy Mike Love has filed a law suit against cousin and former Beach Boy Brian Wilson over the latter’s release of the concept album Smile which Wilson released in 2004 and a free CD giveway. The suit alleges the misappropriation of Love’s songs, likeness and the Beach Boys trademark. Smile was first recorded in 1967 but was disowned by Love and the album was, in effect, a Wilson solo project. However album was never completed and Wilson suffered a breakdown and withdrew from public life. Wilson was the Beach Boys main songwriter and although most…

Tribute bands zapped
USA

COPYRIGHT / TRADE MARK Artists, music publishing ARTICLE LINK: By Tim Cain An interesting story about how Frank Zappa’s estate (The Zappa Family Trust) is seeking to stop unauthorized tribute bands and events using the music of Frank Zappa – and effectively stop bands playing and events taking place. The trust’s cease-and-desist case – which has altered but not shut down any blogs, and which failed to stop at least two tribute band performances it was designed to halt – seems to rest on assertion that “ASCAP licenses limit the grant of rights to nondramatic performances … many works by Frank Zappa are inherently dramatic in nature.” http://www.herald-review.com/articles/2008/01/11/columnists/cain/1029236.txt

Governor Schwarzenegger Signs Law Clarifying Posthumous Right of Publicity Statute
Artists , Image Rights , Trade Mark / January 2008
USA

TRADE MARK / IMAGE RIGHTS Artists Governor Arnold Schwarzenegger has signed Senate Bill 771 into law (2007 Cal. Stat. ch 439) amending California’s right of publicity statute. The law now clearly allows a deceased person’s publicity rights to be passed on by will – even if that person died before January 1, 1985. The move was necessary after the existing publicity rights statute passed in 1985 (Civil Code §3344.1) was called into question by two federal court decisions – CMG Worldwide, Inc. v. Milton H. Greene Archives LLC, C.D. Cal., No. CV 05-2200 (summary judgment for defendants granted May 14, 2007) and Shaw Family Archives Ltd. v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y., May 2, 2007). The latter case involved a dispute over the ownership of Marilyn Monroe’s right of publicity. Marilyn Monroe bequeathed her residuary estate to her long-time friend and acting coach Lee Strasberg; the question before the courts was whether Monroe’s publicity rights existed when she died in 1962 and could be bequeathed as a property right as California’s right of publicity statute recognizing a posthumous right only became effective January 1, 1985. http://www.loeb.com/news/CaseDetail.aspx?article=493

Four Tops win injunction and a most unusual order
Artists , Trade Mark / January 2008
UK

TRADE MARK Artists Abdul ‘Duke’ Fakir, a founder member of The Four Tops, has won a legal action in the High Court in London against Viscount Oliver Miller who has been touring the UK under then name Viscount Oliver’s Legendary Four Tops. Miller had no connection with The Four Tops, either in a recording or performing capacity and it is arguable if his band was meant to be a tribute band. Fakir and four other claimants began action against Miller after being made aware of the Viscount Oliver Legendary Four Tops tour by a UK fan. Fakir then discovered that Miller had trademarked ‘ Viscount Oliver’s American Dream The Legendary Four Tops‘ and that Miller had been for some time touring the UK using photographs of the old Four Tops to convince punters that they were the genuine article and claimed in  press handouts amongst other things that he had recorded with the band and inferred that in fact he was one of the Four Tops. When the Viscount refused to stop touring under The Four Tops banner, or to surrender his trademark, Fakir sued. Miller issued a defence to the litigation, but this was struck out after “persistent and serious breaches of court orders” on the defendant’s part….

Bands sue over Rolling Stone magazine cartoon feature
Artists , Image Rights , Trade Mark / January 2008
USA

TRADE MARK / IMAGE RIGHTS Artists The dispute between certain US indie labels and the American music magazine Rolling Stone has escalated after two bands – Xiu Xiu and Fucked Up – launched a class action lawsuit against the magazine’s publisher, Wenner Media, and one of their advertisers, RJ Reynolds who produce Camel cigarettes. The dispute relates to a cartoon feature that appeared in the magazine last month, and which featured cartoons of various indie bands – but the feature was backed by a big advert for Camel cigarettes, and a number of the artists featured in the cartoons claim that readers will have assumed the cigarette brand had sponsored the feature, and that they, the artists, had endorsed that sponsorship. Wenner have denied that the feature was sponsored, and claim it was a coincidence the cartoon feature was printed back to back with the Camel ad. However, despite that a number of indie labels whose artists appeared in the feature last week published an open letter demanding a retraction and apology from the magazine, while political types have been taking aim at Camel owners RJ Reynolds claiming that the association with a music based cartoon feature breaches a cigarette industry code…

Tarzan yell cannot be registered as a trade mark
Trade Mark / December 2007
EU

TRADE MARK All areas The excellent Out-law site reports on a recent European Decision that Tarzan’s distinctive yell cannot be registered as a trade mark because it is almost impossible to represent graphically. Sounds can be registered as trade marks, but the ruling could limit that to sounds that can be written in standard musical notation. http://www.out-law.com/page-8587 . The mark was submitted as a spectrogram – a graphic representation of Tarzan’s yell – the “aaaahh-ah-ah-aaaaaah-ah-ah-ahhh” (or something like that) with a description of the mark in the application as consisting of ‘five distinct phrases namely sustain, followed by ululation, followed by sustain but at a higher frequency followed by ululation followed by sustain at the starting frequency”. But the OHIM (Office for the Harmonisation of the Internal Market, Trade Marks and Designs) was having none of saying the graphic submitted could not be recognised “from the image as filed whether the sound phenomena depicted is a human voice or something else” … “nobody would be able to hum the Tarzan yell from the spectrogram and nobody reads spectograms for entertainment”. A new application has been filed and the OHIM have issued a release saying that although the sonogram was refused registration, a…

MTV v MTV – TV stations fight for same name in Hungary
Trade Mark / December 2007
Hungary
USA

TRADE MARK Television Variety reports that youth favourite MTV is facing legal action from national broadcaster MTV – with the latter’s long established name standing for Magyar Televizio. Magyar has survived the Soviet occupation and an insurrection of rioters but has been forced to issue legal proceedings to stop Viacom’s MTV from using the acronym in Hungary where Magyar Televizio’s MTV has been a weighty brand in Hungary for the past 50 years. The 1956, revolution began outside the offices of Magyar Radio, which spawned Magyar Televizio a year later. Pitched battles between Hungarian freedom fighters and Red Army soldiers took place at Szabadsag Square ( Freedom Square), where the broadcaster is now housed. http://www.variety.com/article/VR1117974818.html?categoryId=2523&cs=1 An interesting parallel with the ‘East meets West’ battle of trade marks is Anheuser -Busch’s fight to establish the Budweiser trademark in the face of strong opposition from the Czech Brewery Budejovicky Budvar NP who produce Budweiser Budvar lager. http://www.iht.com/articles/ap/2006/11/09/business/EU_FIN_Czech_Portugal_Budvar.php http://ipkitten.blogspot.com/2004/11/trips-rules-ok-says-ecj-in-latest-bud.html http://www.billingsgazette.com/newdex.php?display=rednews/2004/01/16/build/business/35-bud.inc

Book Titles and Trade Marks
Artists , Trade Mark / December 2007
UK

TRADE MARK Artists ARTICLE: By Nicola McCormick, Solicitor, Simkins Partnership In the search for a pithy, apposite book title it is sometimes appealing to reference or parody a well-known brand, phrase or name but will this cause a problem if that name is a registered trade mark? Conversely, what should your response be if someone complains that the book title you thought so original and snappy is in fact a registered trade mark? There is no new law in this area but we have advised on it several times recently and thought it a topic worth revisiting. We are only concerned here with registered trade marks which are governed by the Trade Marks Act 1994. There have been several cases touching on the topic of book titles and trade marks. The most widely cited of those cases centred around a book about the band Wet Wet Wet. The band name was a trade mark registered in relation to, amongst other things, books. The defendant intended to publish a book entitled “Wet Wet Wet – A Sweet Little Mystery”. This was an unauthorised biography about the band. The band wanted to prevent publication under this title saying it infringed their trade mark….

Upholstery use prompts Britney action
Copyright , Trade Mark / December 2007
USA

COPYRIGHT, TRADE MARK All areas Five Eight reports that Sony BMG and MTV Online have been found guilty of violating counterfeiting laws in a Britney Spears video. Luxury goods manufacturer Louis Vuitton brought forward the case after noticing a similarity between in-car upholstery in the video for ‘Do Something’ and its own cherry blossoms design. A Paris civil court has ordered the two companies to desist from broadcasting or marketing the video and fined them E80,000 apiece. TV stations received the following from Sony BMG: “Good afternoon, In connection with a court proceeding in France brought by Louis Vuitton, a judgment was entered against SONY BMG this week regarding the music video for the Britney Spears track “Do Something. The original video included a short shot of Vuitton fabric contained on the interior of a pink Hummer vehicle. The court held that this video infringed Vuitton’s rights. Please confirm and take down if live on your service the below. Britney video ‘Do Something’ USZM20500003 http://www.billboard.biz/bbbiz/content_display/industry/e3i6ed02f115f5e252e0fc8928bb09f4452

Red hot stuff as Californication dispute heads for the courts
Artists , Trade Mark / December 2007
USA

TRADE MARK Artists, television The IPKat reports on the of the altercation between The Red Hot Chili Peppers and US broadcaster Showtime over the use of the word Californication – this being the name of the band’s 1999 album and a hit single. The band alleges unfair competition, dilution of the value of the name and unjust enrichment, claiming that the title is “inherently distinctive, famous … and immediately associated in the mind of the consumer” with the band. Injunctive relief is sought in a Los Angeles court against the broadcasting of Showtime’s TV series of the same name, as well as an account of profits. The television series features a novelist suffering from writers’ block and a mid-life crisis, together with a character named Dani California – coincidentally the title of another Red Hot Chili Peppers song released in 2006. http://ipkitten.blogspot.com/2007/11/hot-stuff-for-la-courts.html

UK Trade Mark Law Changes
Trade Mark / November 2007
UK

TRADE MARK All Areas By Tom Frederikse, Clintons UK trade mark law has changed so that the UK Registry will no longer block applications for being identical or similar to existing registrations. From 1 October 2007 under the Trade Mark (Relative Grounds) Order 2007, existing trade mark holders will carry the burden of trying to oppose (or negotiate around) any application that may threaten their registrations, without assistance from the government beyond a single alert notifying them of a possible threat. This is good news for new applicants and bad news for existing owners of UK trade marks. Until today, a new UK trade mark application had to overcome the twin hurdles of being both a registrable mark (i.e. distinctive, not descriptive or generic, not offensive or deceptive – known as “Absolute Grounds”) and being not identical or confusingly-similar to an existing mark in identical or similar classes of goods and services (known as “Relative Grounds”). The UK government, wishing to harmonise with the EU’s “Community Trade Mark” process (and, presumably, also to save costs), will now no longer refuse to register a mark on Relative Grounds unless a successful “opposition” is raised by the owner of an earlier mark. Each…

Pirates board IFPI
Internet , Trade Mark / November 2007
EU
USA

TRADE MARK Internet Pirate Bay, the ongoing thorn in the side of the record and film industries, has launched a new website at …. on no you guessed it, the seemingly vacant www.ifpi.com. The International Federation of Phonographic Industries whose main website is at www.ifpi.org have said they will bring a WIPO (World Intellectual Property Organisation) action to regain the ‘cyber squatted’ domain.

Oldies groups go to court to challenge ‘truth in music’ law but promoter held in contenpt for using Drfiters name
Artists , Trade Mark / October 2007
USA

TRADE MARK Artists ARTICLE LINK  The first legal challenge to one of the seventeen states who have passed the so called ‘Truth in Music’ law has been launched by a music promoter. The law aims to protect heritage acts and stop consumers being ripped off by imposter bands. At the same time a New Jersey judge has found the same music promoter in contempt of court for continuing to use the name of a famous oldies group, the Drifters, in defiance of an 8 year old court order. US District Judge Dickinson R. Debevoise termed Larry Marshak’s promotion of an offshoot of The Drifters titled The Elsbeary Hobbs Drifters as “an elaborate shell game.” Judge Debevoise held that Marshak, his relatives and business associates violated a 1999 injunction banning the use of the Drifters name “or any other name that would be confusingly similar to the Drifters.” Marshak has been in dispute with Faye Treadwell, wife of the former Drifter’s manager George Treadwell and owner of the Drfiters trade mark for over thirty years. It is companies linked to Marshak who have launched the challenge against state Attorney General Anne Milgram. Marshak and his associates, including his wife and sister-in-law, have promoted…

New Nominet Consultation On An Important Change To Its Dispute Resolution Service
Internet , Trade Mark / October 2007
UK

TRADE MARK Internet ARTICLE LINK By Susan Barty and Phillip Carnell CMS Cameron McKenna Nominet, the domain name registry for all .uk domain names, held an open consultation last year on reforming the Dispute Resolution Service (the “DRS”). In light of the responses to the original consultation, Nominet produced a paper which suggested a number of changes to the DRS. One of the proposed changes is the introduction of a default transfer system, which would provide an automatic transfer of domain names in the event a response to a DRS complaint is not received from the domain name registrant. See http://www.mondaq.com/article.asp?articleid=52610&email_access=on

New United Kingdom Intellectual Property Office Rules Affect Owners Of European Community And Certain International Trademark Applications And Registrations
Trade Mark / October 2007
UK

TRADE MARK All areas ARTICLE LINK Article by Mintz Levin Intellectual Property Section Beginning October 1, 2007, the United Kingdom Intellectual Property Office (UKIPO), which covers the countries of England, Scotland, Wales and Northern Ireland, will change its trademark examination practice with regard to prior-filed trademark applications and registrations. http://www.mondaq.com/article.asp?articleid=52542&email_access=on  

New York signs off on ‘Truth In Music’ law
Artists , Trade Mark / September 2007
USA

TRADE MARK Artists New York has become the latest state to sign up to laws which are aimed to prevent Musical fakers impersonating groups they are not affiliated with – imposter bands will now will now face up to $15,000 in fines after Govenor Eliot Spitzer signed the state’s Truth in Music law. The bill, which will go into effect in one month, was prompted by groups representing themselves as doo-wop artists like the Platters, the Coasters and the Drifters. Jon Bauman, “Bowzer” from the group Sha Na Na, advocated for the legislation in New York and other states. http://www.newsday.com/entertainment/music/ny-limusi225341043aug22,0,7885163.story

Dykes on Bikes ride on in USA
Artists , Trade Mark / August 2007
USA

TRADE MARK Artists The Court of Appeals for the Federal Circuit in the USA has held that an application to register the mark Dykes on Bikesas a trade mark by the San Francisco Women’s Motorcycle Contingent cannot be barred from registration on mortality grounds. The application was made by a group of lesbian bikers who lead the annual San Francisco gay pride march, and was turned down twice by the US Patent Office. However the IPKat reports that the decision itself is very narrow as the mark itself was not considered. Opposition to the mark was brought by a Michael McDermott on the grounds that it is immoral or offensive who argued that by including the term ‘dykes’ was disparaging, and also that the mark was scandalous because it was associated with a pattern of illegal activity by the applicants But the Court’s the decision is based on whether the opponent had standing to oppose the mark. According to the court’s past case law, to have standing in opposition proceedings, a party must have (i) a real interest in the proceedings and (ii) reasonable basis for his belief that he would be damaged by registration. A previous finding that McDermott had a real…

Another US state legislates for ‘the real thing’
Artists , Trade Mark / August 2007
USA

TRADE MARK Artists ‘impostor’ bands who have no connection with original heritage bands now face $5,000 fines each time they pretend to be The Coasters, The Drifters or some other band they’re not. Florida is the latest state to draft the law, which has been pushed by Jon “Bowzer” Bauman, former frontman for ’60s rock revivalists Sha Na Na. Bauman who has been lobbying states for laws to prevent phonies and fakers from passing themselves off as authentic members of groups. Ten other states already have enacted the law. These fake bands mislead fans and steal income and glory from surviving members of legitimate bands, he said. “It’s heartbreaking for the people who made this music to be suffering this indignity at this point in their life when they should be recognized as pioneers.” Under the Florida law, musicians must meet strict criteria if they’re going to advertise or take the stage using the name of a famous band. The group must have at least one member from the original group and be legally entitled to that name. The law lets bands use names they already have trademarks for — even if they aren’t the original members — and it…