Author Archives: Marissa Lewis

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

Sports Humor Site Fends Off Domain Name Claim from “Sports Center” Trademark Owner: ESPN, Inc. v. Will Applebee

Claim No. FA1706001734753 (NAF July 31, 2017)

In a decision highlighting the subtleties of trademark law and claimed “parody” websites, Will Applebee, a lawyer-turned-sports writer, has successfully defended his sports humor website,, against ESPN’s recent efforts to seize its domain name to protect its flagship brand.

ESPN’s SportsCenter is a popular daily sports news television program that offers breaking news, highlights, and in-depth analysis and commentary on all things sports.  It has also been known to employ elements of humor, especially in its advertisements. Continue reading

Flo & Eddie, Inc. v. Sirius XM Radio, Inc.: New York State’s Highest Court Finds No Public Performance Right for Pre-1972 Sound Recordings at Common Law

In a case of first impression, New York’s highest court ruled that New York common law does not include a right to control public performances of pre-1972 sound recordings.

The ruling arises from a years-long legal battle between The Turtles, the 1960s rock band most famous for the hit song “Happy Together,” and Sirius XM, the nation’s largest digital satellite radio service.  In 2013, members of The Turtles (through their company, Flo & Eddie, Inc.) brought a class action lawsuit against Sirius XM in the United States District Court for the Southern District of New York, alleging that Sirius XM violated New York’s common law right of public performance by broadcasting and streaming copyrighted pre-1972 sound recordings, including The Turtles’ songs, without a license.  Sirius XM admittedly broadcasts pre-1972 sound recordings to its paying subscribers without a license, but contends that no license is required – raising a legal question that has been the subject of much dispute in recent years:  whether, and to what extent, copyright law protects the public performance of these decades-old sound recordings. Continue reading

Third Circuit Upholds Jury’s Award of $1.6 Million in Actual Damages for Infringement of Rare Photographs


A recent decision from the U.S. Court of Appeals for the Third Circuit upheld a $1.6 million award of actual damages in a copyright infringement case, affirming the “premium” price a federal jury in Delaware placed on the defendants’ extensive use of the plaintiff’s rare stem cell images.

The plaintiff, photographer Andrew Paul Leonard, takes highly technical black-and-white photographs of stem cells obtained from doctors, scientists, and researchers using an electron microscope, which he then artistically enhances to appear in color.  The two images at issue in this case, depicted below, were created by Leonard in the 1990s – a time when Leonard’s images were unique and highly sought after because there were very few photographers who had the technical skill necessary to produce such work.  Leonard made his stem cell images available for license at prices ranging from under $100 to several thousand dollars, including a $1,500 license fee for use of one of the images at issue on the cover of Time magazine.

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#TRADEMARKS: Registration of Hashtag Marks

The #hashtag, once confined to Twitter, has become ubiquitous across virtually all social media platforms.  The hashtag (formerly known as the “pound” sign) has revolutionized the way information is organized, discovered, and shared online.  Social media users use hashtags – i.e., a keyword or phrase preceded by the hashtag symbol (#) – to identify social media posts or messages on a specific topic.  The hashtag functions as a searchable link, which can be clicked on to find other posts related to that specific topic.  The phenomenon is not just for millennials; brand owners have embraced the hashtag as a way to boost brand recognition, generate buzz around new products, engage with their consumers, and attract new ones.

It is no wonder that brand owners look to trademark law to protect their valuable hashtags.  The United States Patent and Trademark Office (“USPTO”) has recognized the registrability of “hashtag marks,” but the legal community is still grappling with the legal nuances of this trend-turned-staple.

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CDAS Files Amicus Brief in Fox Television Stations Inc. v. FilmOn X

Yesterday, CDAS submitted an amicus brief in a high-profile case involving the distribution of television programming over the Internet.  The brief, on behalf of the Copyright Alliance, was filed in the Ninth Circuit Court of Appeals in support of the appellants in the case captioned Fox Television Stations Inc. v. FilmOn X.  This is the second amicus brief that CDAS’s litigation team has submitted this week, with the other coming two days prior in support of a petition to the U.S. Supreme Court for certiorari in the Google Books case.

To view the full brief, please see the PDF below.

CDAS Files Amicus Brief in Fox Television Stations Inc. v. FilmOn X


Copyright Termination Is Comin’ To Town Law360, New York

After sorting through the tangled 80-year history behind the song “Santa Claus is Comin’ to Town,” the Second Circuit recently held that rights to the Christmas classic will revert back to the songwriter’s heirs on Dec. 15, 2016. Rights to the composition, written by J. Fred Coots and Haven Gillespie, are currently held by EMI Feist Catalog Inc. According to the Second Circuit, EMI’s rights are derived from a post-Jan. 1, 1978, author-made grant that replaced and superseded a prior grant, and that is now eligible for termination.

The Second Circuit’s decision provides insight into the judicial review of termination rights, and sets out certain principles concerning the statutory calculation of termination dates. This article outlines the court’s decision in order to provide practitioners with guideposts that may be useful in determining if, and when, to terminate a grant of copyright.

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CafePress Cannot Beat Copyright Claim for Sale of Merchandise Created From User-Generated Content

Artist Steven Gardner was not pleased to find Cafe Press selling merchandise bearing four of his illustrations on, without his permission.  Gardner filed a copyright action against CafePress, and Cafe Press moved to dismiss, claiming that it was only acting at the direction of its users and could not be liable for direct infringement.  A district court in the Southern District of California denied the motion, determining that a genuine issue of material fact exists as to whether CafePress acted with the volition required to support such a claim.  Gardner v. CafePress Inc., Case No. 3:13-cv-1108-GPC-JLB (S.D. Cal. Dec. 4, 2014). Continue reading

Seventh Circuit Affirms Fair Use of Mayor’s Photograph, and Criticizes Second Circuit’s Approach in Cariou v. Prince

Note: This blog is cross-posted with permission from

Photographer Michael Kienitz (“Kienitz”) appealed the Western District Court of Wisconsin’s decision to grant summary judgment in favor of Sconnie Nation LLC and its vendor, Underground Printing-Wisconsin LLC (collectively, “defendants” or “Sconnie Nation”), contending defendants were liable for copyright infringement in connection with their unauthorized use of plaintiff’s photograph. Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir. Sept. 15, 2014). The Seventh Circuit affirmed the district court’s decision, agreeing that defendants’ use of the photograph constituted a fair use. The central issue in this appeal was whether the Sconnie Nation had a valid fair use defense for its modified version of Kienitz’s copyrighted photograph. Continue reading

Re-Creation of Scenes from Pornographic Film for Biopic Not a Violation of Copyright Laws

New York Court Tosses Copyright and Trademark Claims at Pleading Stage

In Arrow Productions, Ltd. v. The Weinstein Company LLC, et al., No. 13 Civ. 05448, 2014 WL 4211350 (S.D.N.Y. Aug. 25, 2014), Judge Griesa undertook the judicial task of determining whether Defendants’ unauthorized recreation of scenes from Arrow’s copyrighted film constitutes fair use by viewing “all that is necessary” to make such determination – scenes from the pornographic film descriptively titled Deep Throat, and the film that allegedly copied them, Lovelace.  All in a day’s work.

Arrow is the copyright owner of the well-known pornographic film Deep Throat (1972) starring a young Linda Lovelace.  Deep Throat is about a woman’s journey to achieving sexual satisfaction, and is replete with sexual scenes and nudity.  Defendants’ film, Lovelace (2013), is a biographical account of Linda Lovelace.  Lovelace documents how Linda Lovelace’s formative years in the pornography business, including her experience filming Deep Throat, and her emotionally abusive marriage to Chuck Traynor led her to become an outspoken critic of pornography later in life.  Lovelace does not contain any pornographic scenes or nudity. Continue reading