Legal Blog

The Ninth Circuit Affirms Significant Legal Victory for Fox, Allowing Hit Television Series Empire to Continue Producing Show and Merchandise over Record Label Empire Distribution’s Objections

The U.S. Court of Appeals for the Ninth Circuit recently affirmed a lower court’s holding that Fox’s use of the name “Empire” for its hit television series is protected by the First Amendment, leaving record label Empire Distribution without any recourse on its trademark infringement claims.  A copy of the full decision is available here.  Of most significance is the court’s arguable expansion of the Rogers v. Grimaldi test for expressive use of trademarks into the realm of promotion and merchandise.

Empire Distribution, founded in 2010, records and releases albums in the genres of hip hop, rap, reggae, and R&B under the name “Empire.”  Its portfolio of artists includes Snoop Dog, T.I., and Kendrick Lamar.  In 2015, Fox premiered its Empire television show, a drama that centers on a fictional New York-based hip hop music and entertainment company called “Empire Entertainment.”  The Empire show features songs and original music, which Fox releases through Columbia Records after the episode airs, and packages as soundtrack albums at the end of each season – of which there have been four and counting. Continue reading

Notable TV and Digital Deals from Q3-4 2017

The last few months have seen a number of high-profile deals in episodic programming, spurred in part by the entry of a number of significant new players in the marketplace. Here are a few particularly noteworthy entries:

Jennifer Aniston, Reese Witherspoon Morning Show Drama Lands at Apple With Two-Season Order

Apple is anticipated to become a major purchaser of entertainment content, and it made a splash with its first show announcement – a two-season order for a show starring and executive produced by Jennifer Aniston and Reese Witherspoon, set inside the cutthroat world of morning television.

Lin-Manuel Miranda’s ‘Kingkiller Chronicle’ Series Set At Showtime

Everyone is looking for the next “Game of Thrones and “The Kingkiller Chronicles,” in development at Showtime and based on Patrick Rothfuss’s acclaimed fantasy series, may be it. “Hamilton” creator Lin-Manuel Miranda is attached to executive produce, and will contribute music to the series – a key development as music is an important component of Rothfuss’s books. Continue reading

Florida Supreme Court Sides with Sirius XM in Battle over Pre-1972 Sound Recording Royalties

In a decision issued last month in the ongoing battle waged by former members of the 1960s rock group The Turtles over the scope of copyright performance rights in sound recordings, the Florida Supreme Court concluded that pre-1972 sound recordings are not protected by Florida state law.

The U.S. Court of Appeals for the Eleventh Circuit asked the Florida Supreme Court to interpret Florida state law in connection with the federal lawsuit brought by Flo & Eddie, Inc., the company that owns the master sound recordings of certain musical performances by The Turtles—recordings that are not subject to federal copyright law—against satellite and internet radio provider Sirius XM Radio. Sirius broadcasts Turtles songs to Sirius’s subscribers without paying any royalties to, and without a license from, Flo & Eddie – a practice that Flo & Eddie, for several years, have also sought to invalidate in the New York and California courts.
Flo & Eddie claimed that Sirius’s broadcast of Turtles songs constitutes unauthorized public performances of the sound recordings, and that Sirius’s creation of back-up and buffer copies of the sound recordings constitutes unauthorized reproductions. Because sound recordings created before February 15, 1972 are not protected by federal copyright law, the question of whether “pre-1972” recordings enjoy a public performance right (as post-1972 sound recordings do when digitally transmitted) was certified to the Florida Supreme Court. That court ultimately found that no such right exists. Continue reading

Embedding in the Balance: the Goldman Cases

In a pair of cases pending in the U.S. District Court for the Southern District of New York, photographer Justin Goldman and various online media outlets seek to set the record straight on whether embedding images on a website through in-line linking without authorization constitutes copyright infringement.  A website embeds an image using an in-line link when it uses HTML code to direct a user’s browser to an image file hosted on and transmitted from a server controlled by a third-party (usually another website) yet it appears as if the image resides on the website the user is actually viewing.  The allegedly infringing website effectively opens a “window” allowing the user to see an image hosted by a third party, yet never actually copies, stores, or serves up the image itself.

This is the technological method the defendants used in the Goldman cases, and that many other digital media companies have come to rely on in certain situations (e.g., when images or videos are not available for license), but that many content owners believe harms the image licensing market by leaving open a legal back door around otherwise infringing unlicensed uses. Continue reading

Waving the Checkered Flag: Ninth Circuit Affirms Dismissal of Trademark Claims Arising from PlayStation Racing Games

The U.S. Court of Appeals for the Ninth Circuit this week summarily affirmed a dismissal, from two years ago, of trademark claims brought by flooring company VIRAG, S.R.L. (“Virag”) against Sony Computer Entertainment America, LLC (“Sony”).  In a three-page unpublished opinion, the appeals court held that Sony’s use of the “VIRAG” trademark as set dressing in its Gran Turismo 5 and 6 video games was protected by the First Amendment and immune from liability under federal trademark law.  The ruling’s brevity, however, should not detract from its significance.

In 2004, Virag, a global commercial flooring distributor, became a sponsor of the Rally of Monza, a Formula One auto race held in Monza, Italy.  Starting in 2006, the plaintiff’s “VIRAG” mark was displayed on a bridge over the Monza track for each race.  Virag claims that its name and trademark has not only become affiliated with its products, but also the rally.  Continue reading

Who’s Punch Line Is It Anyway? Jokes Are Potentially Copyrightable, Says the U.S. Copyright Office.

For the many everyday citizens who have no recollection of when the New England Patriots won Super Bowl XLIX against the Seattle Seahawks after a “questionable” play call, comedy blogger Robert “Alex” Kaseberg’s (“Kaseberg”) saves the day.  Thanks to his witty remarks, and the legal controversy that subsequently unfolded, the world may never forget. Kaseberg wrote in his blog “A Little Bit Bad” on February 3, 2015: “Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll”. Pete Carroll is the Seahawk’s head coach, and was at the time of the fateful “Big Game.”  The U.S. Copyright Office seems to have gotten the joke, at least on the second telling.

Kaseberg originally sought to register the joke as a two-sentence 27-word textual work, titled “A LITTLE BIT BAD, Blog Content, Brady Joke February 3, 2015” (the “Work”).  The U.S. Copyright Office federal review board (the “Board”) denied Kaseberg’s first request to register the Work. Kaseberg later sued, among others, Conan O’Brien, and his production company Conaco, after the late night host told a similar joke during his show.  On May 12, 2017, the U.S. District Court for the Southern District of California ruled partially in Kaseberg’s favor, holding that he was entitled to a “thin” copyright in the Work. Continue reading

Court Denies FX’s Anti-SLAPP Motion in Olivia de Havilland’s Feud Lawsuit

A California court recently ruled that a lawsuit by actress Olivia de Havilland over her portrayal in the television series Feud:  Bette and Joan could move forward, denying FX Networks’ motion to strike the lawsuit on First Amendment grounds.

The show, which is a docudrama centered on the rivalry between Bette Davis and Joan Crawford during the early 1960s, portrays numerous real-life figures from the era including de Havilland. De Havilland, who is 101 years old, is portrayed by Catherine Zeta-Jones on the show.  In her lawsuit, de Havilland alleges that the show falsely depicted her as a gossip who used vulgar language about other people, including her sister, and brought claims against FX for “false light” (a cause of action similar to defamation), violation of her right of publicity, and unjust enrichment.

FX responded by filing a motion to strike the lawsuit under California’s anti-SLAPP statute, which provides a procedural vehicle for defendants to obtain an early dismissal of meritless lawsuits that are premised on First Amendment activity which is in the public interest.  In other recent cases, entertainment companies have successfully used the California anti-SLAPP statute to defend themselves from claims arising from expressive speech in motion pictures, television shows, and video games.  For example, last year the producers of the film American Hustle used the anti-SLAPP statute to dismiss a defamation lawsuit stemming from a scene in that film, and in 2014 the video game publisher Activision Blizzard used the anti-SLAPP statute to dismiss right of publicity claims brought by the former Panamanian dictator Manuel Noriega over his depiction in Call of Duty: Black Ops II. The anti-SLAPP statute is an especially potent weapon for defendants because if they succeed in dismissing the plaintiff’s claims on an anti-SLAPP motion, the plaintiff must pay the defendants’ attorney fees. Continue reading

Initial Coin Offerings: Benefits and Legal Risks on the New Frontier of Investing

It takes a lot to build a successful business.  Entrepreneurs need a great idea, dedication and a hearty appetite for risk.  That’s not to mention the more practical considerations, like employees, legal and accounting, work space, computers, software and technology, marketing, advertising, publicity, and the list goes on.  How, one may ask, can a business just getting on its feet do all of this?  The answer is at once simple and obvious, yet extremely complex: money.

Most early-stage companies require some amount of start-up capital if they hope to grow the business.  As a result, entrepreneurs and their attorneys have invented numerous creative ways to raise money.  Examples include selling equity, the convertible promissory note, the “simple agreement for future equity” (SAFE), which eliminates the debt features of the note, and the “keep it simple security” (KISS), which aims for a fair balance between company and investor.  Increasingly popular for certain projects are crowd-funding campaigns on platforms like Kickstarter and Indiegogo, where businesses can pre-sell products, offer rewards for donating money, or even sell equity in the company. Continue reading

Ninth Circuit Affirms Injunction Against VidAngel’s “Family Friendly” Video Filtering Service, Halting Long-Running Dispute with Hollywood Movie Studios

On August 24, 2017, the Ninth Circuit Court of Appeals affirmed a district court’s issuance of a preliminary injunction barring Utah-based content filtration company VidAngel from filtering and streaming any content owned by a group of Hollywood movie studio plaintiffs, who opposed VidAngel’s editing of their content (to omit “objectionable” material) and distribution without permission.


The movie studio plaintiffs (“Studios”) produce and distribute copyrighted motion pictures and television shows through many sources, including through DVD and Blu-ray sales and various online channels.  To protect against unauthorized access to and copying of their works, the Studios employ technological protection measures (“TPMs”), which allow consumers to use players from licensed manufacturers to playback (but not copy) content.

In 2014, VidAngel launched an online service which eliminated objectionable content from movies and television shows using a software program that removed the TPMs, allowing VidAngel to copy content, and tag it for over 80 categories of “inappropriate” material.   To remove the objectionable content, VidAngel would purchase a physical disc containing the copyrighted movie or television show, “rip” a digital copy to a computer, and stream the filtered version of the work to its customers through any VidAngel-supported device, including Roku, Apple TV, mobile phones and tablets, and desktop or laptop computers.  Customers using VidAngel’s streaming service paid $1 to $2 to view the work with whatever type of objectionable content they chose to omit.  In certain cases, this was well below the price offered by the Studios to view unfiltered copies of the movie or television shows.    Continue reading

ARCHIE MD, INC. V. ELSEVIER, INC.: Court Permits Copyright Claim To Proceed Despite Error In Registration Application

For many copyright owners, especially those attempting to register works of visual arts, determining whether a work is published or unpublished for registration purposes is one of the more challenging issues and an impediment to registration. The U.S. District Court for the Southern District of New York, in Archie MD, Inc. v. Elsevier, Inc., No. 16-CV-6614 (JSR), 2017 WL 3601180 (S.D.N.Y. Aug. 20, 2017) recently clarified the standard by which a copyright registration may be considered valid despite containing inaccurate information.

In 2005, Archie MD, Inc. entered into an Animation License Agreement (“ALA”) with the publisher Elsevier, Inc., under which Elsevier would license Archie’s library of 3-D medical animations for use in its various publications. About two weeks after entering into the ALA, and after Archie had delivered the works to Elsevier, Archie submitted a single copyright registration application for a group of unpublished works. This registration included the work at issue in this case, an animation entitled “Cell Differentiation.” The Copyright Office eventually registered the group of works on August 15, 2005. Continue reading

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