IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

Opining on the apparently wild popularity of karaoke, the Sixth Circuit in Zomba Enterprises, Inc. v. Panorama Records, Inc., affirmed the District Court's conclusion that Panorama's infringements of Zomba's copyrights were willful, awarding $806,000 in enhanced statutory damages and awarding attorneys' fees to Zomba.  Panorama had been manufacturing and selling karaoke CDs since 1998, apparently without obtaining licenses for any of the songs it had released as part of its karaoke packages.  Notably, after receiving a cease-and-desist letter from another music publishing company, Panorama ultimately negotiated license agreements with that company.  But despite two cease-and-desist letters from Zomba, Panorama continued selling karaoke CDs containing Zomba's songs and did not obtain any licenses from Zomba.  Then, after entering into a consent order with Zomba after Zomba asserted 30 counts of copyright infringement, Panorama apparently breached the consent order within a week of its entry by resuming sales of CDs containing Zomba's songs.  Based on these facts, the Sixth Circuit readily concluded that "Panorama exhibited a reckless disregard for Zomba's rights" and that "Panorama's reliance on its fair-use defense was objectively unreasonable."

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• The Ninth Circuit affirmed the grant of partial summary judgment in the Jimi Hendrix right of publicity case pending in the Western District of Washington.  Via the Seattle Trademark Lawyer.
• The Federal Circuit found the marks "CHI" and "CHI PLUS," used in connection with electric massagers, likely to cause confusion in an opinion issued on Friday.
• Marty Schwimmer at The Trademark Blog made my day with his post on Static v. Dynamic Branding that featured an array of the artwork that Google has made of its mark.
•  The Eleventh Circuit addressed the issue of the "substantial similarities" versus "virtually identical" standard in a copyright infringement case involving competing factual compilations about yachts listed for sale.
• And in another interesting opinion involving a suit by a Burger King franchisee against McDonald's alleging false advertising under Section 43 of the Lanham Act in connection with McDonald's various promotional games, the Eleventh Circuit tackled the prudential standing test for such claims.

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Admittedly, this is not a new decision but an important one that I've intended to get to for some time.

The case, U.S. v. ASCAP, No. 41-1395 (S.D.N.Y., Apr. 25, 2007), arose when the parties--AOL, Yahoo!, RealNetworks and ASCAP--could not agree on a fee for a license to publicly perform ASCAP's repertoire of musical works in the applicants' online services.  The specific issue before the Southern District of New York on the parties' cross-motions for partial summary judgment was whether the downloading of a digital file of a particular song constituted a "public performance" of the song under Section 101 of the Copyright Act.

Parsing the definition of "performance" under the Act, which includes the terms "recite," "render" and "play," the Court concluded that "in order for a song to be performed, it must be transmitted in a manner designed for contemporaneous perception."  Distinguishing downloading from streaming, the Court agreed with the amicus curiae RIAA that the download of a music file more accurately constituted a mechancial reproduction of the copyrighted work in the form of a "digital phonorecord delivery" than a "performance" of the song.

Thus, although the Court did not foreclose the possibility that a transmission might constitute both a stream and a download, and therefore meet the definition of "performance," ultimately it concluded that the download of a digital music file does not, standing alone, constitute a "public performance" of the song under the Copyright Act.

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The Central District of California dealt a heavy blow to Carol Burnett's challenge to the Family Guy's parody of Burnett's "Charwoman" character, dismissing her claims for copyright infringement and violations of the Lanham Act without leave to amend and declining to exercise supplemental jurisdiction of her state law claims.

In an episode of the Family Guy entitled "Peterotica," the "family patriarch" entered a porn shop with friends, noting that the shop was cleaner than expected.  In response, one of the friends explained that "Carol Burnett works part time as a janitor" and the scene shifted for less than five seconds to an animated figure resembling Burnett's "Charwoman" character mopping the floor next to some blow-up dolls, a rack of "XXX" movies and a curtained room with a sign above it reading "Video Booths."  As the character mops, there was a "slightly altered version of Carol's Theme from The Carol Burnett Show" playing.  The scene then switches back to the "patriarch" and his friends after which the friends make two remarks relating to Carol Burnett and her parents.

Carol Burnett then sued for copyright infringement, violation of the Lanham Act, violation of California's statutory right of publicity and common law misappropriation.  In response, the defendant filed a motion to dismiss Burnett's claims, also bringing a motion to strike Burnett's state law claims under California's anti-SLAPP statute.

Although Judge Pregerson noted how "distasteful and offensive" the segment was to Carol Burnett, the Court had no difficulty concluding that the parody was protected fair use, which precluded both her copyright infringement and Lanham Act claims.  The Court did not, however, rule on the defendant's motion to strike Burnett's state law claims, instead choosing to decline to exercise supplemental jurisdiction over those claims and therefore denying the motion to strike as moot.

In concluding its opinion, the Court offered some comments on its view of the broader import of the case:

To some extent this dispute is indicative of just how far the "new media" has come from the "old media."  The old media harkens back to days when crude jokes and insensitive, often mean spirited, programing was perhaps found in live night club performances but was not present on television.  In the new media, any self imposed restraint essentially has been eliminated.  Public figures, such as Ms. Burnett, are frequent targets of parodies and crude innuendo.  As Ms. Burnett well knows, it takes far more creative talent to create a character such as the "Charwoman" than to use such characters in a crude parody.  Perhaps Ms. Burnett can take some solace in that fact.
However, the law, as it must in an open society, provides broad protection for the defendant's segment.

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• The Seattle Trademark Lawyer is keeping tabs on the litigation over the publicity rights of Jimi Hendrix.
• In a case involving libel, foreign judgments and personal jurisdiction, check out the Second Circuit's decision in Ehrenfeld v. Mahfouz.
• William Patry discusses the Supreme Court's decision overruling Conley v. Gibson at The Patry Copyright Blog.
• Ron Coleman at Likelihood of Confusion gives a good lesson on How Not to Build a Brand.  Got that cease and desist yet?
• The New York Assembly has passed legislation that would, among other things, make it a class E felony to disseminate "violent and indecent video games" to minors.  According to the summary of the bill, the justification for the bill is that "[p]sychological experts have concluded that there is a connection between playing violent video games and violent behavior[.]"
• People were talking about a Macmillan exec's rather lame attempt to "teach Google a lesson" by taking two of Google's laptops from the company's booth at Book Expo America in New York, which apparently was intended to reflect the exec's feelings about Google Book Search.  Lawrence Lessig, ars technica and others weighed in on the discussion.

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The Second Circuit issued a decision yesterday in which it found that the FCC's policy of sanctioning so-called "fleeting expletives" was arbitrary and capricious because the policy represented a significant departure from the FCC's previous positions and the FCC failed to articulate a "reasoned basis" for the change in policy.

The case arose after Fox Television Stations challenged the FCC's notices of liability against it for two broadcasts which the FCC claimed violated its indecency regime.  The two Fox programs at issue were the 2002 and 2003 Billboard Music Awards in which Cher, in an acceptance speech, used the "F-word" and presenter Nicole Richie used both a variation of the "F-word" and a curse word in reference to cow excrement.

In finding that these programs were indecent and profane, the FCC concluded, in relevant part, that it did not matter that the use of the expletives was "fleeting" and "isolated" and held that repeated use of expletives is not necessary for an indecency finding.  It was the FCC's rejection of the "fleeting" and "isolated" nature of the use of the expletives that the Second Circuit took issue with, noting that previously, "the FCC had consistently taken the view that isolated, non-literal, fleeting expletives did not run afoul of its indecency regime."

Although Fox, CBS, NBC and various amici raised a number of challenges to the FCC's decision, because the Second Circuit found the FCC's decision to be arbitrary and capricious, it declined to "reach any other potential problems with the FCC's decision."  Nevertheless, the Second Circuit noted that it was "skeptical that the Commission can provide a reasoned explanation for its 'fleeting expletive' regime that would pass constitutional muster," and went on to provide some "observations" on that topic.

It is a very detailed opinion (53 pages including the dissent) on a topic I have always found particularly interesting and troubling from a First Amendment perspective, especially given the fact that, as the Second Circuit noted, "it is increasingly difficult to describe the broadcast media as uniquely pervasive and uniquely accessible to children."

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• The son of the great Walter Matthau won a legal battle with the William Morris Agency this week involving the agency's alleged right to commissions from payments received in connection with Mr. Matthau's employment contracts.  You can read the California state court's opinion here.
• And another interesting opinion from the California state courts in which the Los Angeles Unified School District argued that the City of Long Beach and its city attorney were not "persons" under the California Public Records Act and therefore were not entitled to request admittedly public documents under the Act.
• For all the WoW fans out there (and I know there are one or two of you), Blizzard Entertainment reportedly announced that it is suing Peons4hire, one of the so-called "gold spammers" who send in-game messages to players advertising their power-leveling and gold selling services.  According to the announcement, which was posted on one of the WoW forums, "the operators of Peons4hire have been asked to immediately cease all in-game spamming efforts" or face "further legal action."  I'm still trying to get my hands on a copy of the complaint.  You can see the post and learn more about Blizzard's efforts to reduce gold spamming at the WoW website.
  
• I can't top William Patry's description of the recent Ninth Circuit opinion involving copyright and other claims brought by the daughter of Orson Welles in connection with Citizen Kane so I won't even try.  But see here for a copy of the Ninth Circuit's opinion.
• According to The FOIA Blog, the Society of Professional Journalists was trying to unmask the senator who placed a secret hold on FOIA legislation pending in the Senate and SPJ thinks it may have succeeded.
  

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