Stark Victory: Sony Music Successfully Defends Iron Man Copyright Infringement Suit Based on Third-Party Work for Hire Challenge

When composer Jack Urbont brought suit for copyright infringement against rapper Dennis Coles (popularly known as Ghostface Killah), Urbont likely thought he had a straight-forward case. Urbont claimed that Coles’ had improperly sampled Urbont’s “Iron Man Theme” on Coles’ album, Supreme Clientele. Written for the Marvel television program Marvel Super Heroes, the Iron Man Theme served as the theme song for the “Iron Man” portion of the program. Urbont alleged that Coles, along with Sony Music Entertainment and Razor Sharp Records, infringed Urbont’s copyright in both the Iron Man musical composition and sound recording. In order to prove infringement, Urbont needed to demonstrate both ownership of a valid copyright, and copying of the original elements of his work. Urbont seemed to easily satisfy the first requirement: he owned both the initial and renewal copyright registrations in the Iron Man Theme musical composition and, as further proof of ownership, Urbont and Marvel had entered into a licensing agreement in which Urbont is referred to as the “owner,” and Marvel the “licensee,” of the work. According to Sony, however, Urbont composed the Iron Man Theme as a “work for hire,” placing copyright ownership in Marvel, and not Urbont. U.S. District Judge Naomi R. Buchwald agreed, undertaking an analysis focused on the original intent of Urbont and Marvel as to copyright ownership. Continue reading

Inside Counsel’s Five-Part Series, “Where Former Entertainment GCs Go Next”, Provides Firm Profile of CDAS

Inside Counsel’s Senior Editor & Community Manager, Rich Steeves, published a five-part series titled “Where Former Entertainment GCs Go Next” last week, which was prominently featured on the Inside Counsel website.

The series, which discussed the so called “third act” for successful general counsel, provided a comprehensive profile of CDAS and the services the firm provides to clients, while also discussing the appeal the firm has had for former GCs in their transition to a new environment.

CDAS Partners Aileen Atkins, Frederick Bimbler, Douglas Jacobs, Eleanor Lackman, Marc Simon and Stephen Sheppard were interviewed for the series. You can find a link to each part of the series below.


Musical Composition Copyright Infringement Cases Back in Vogue

Music “plagiarism” copyright infringement cases are not uncommon, and have made a comeback in recent years.  Artists from Led Zeppelin (Randy Craig Wolfe Trust v. Led Zeppelin (“Stairway to Heaven”)), to Avril Lavigne (Dunbar v. Gottwald (Lavigne’s “Girlfriend”)), to Jessie J (Loomis v. Cornish (Jessie J’s “Domino”)) have lately become embroiled in legal battles over allegedly pilfered music.  And no case is more notorious nowadays than Williams v. Bridgeport Music, Inc., the gossip-column-worthy lawsuit between the Marvin Gaye Estate and pop stars Robin Thicke and Pharrell Williams over the pop/dance/R&B hit “Blurred Lines.”  Continue reading

Toto Can’t “Hold the Line”: Sony Prevails in Digital Royalty Dispute with Classic Rockers

Toto, Inc. v. Sony Music Entertainment, No. 12-cv-1434 (RJS) (S.D.N.Y. 2014)

A New York federal judge recently ruled in favor of Sony Music Entertainment (“SME”) in the latest dispute over the proper characterization of artist royalties on digital music sales, dismissing a breach of contract claim brought by rock group Toto (best known for the hits “Africa” and “Rosanna”). Ever since the Ninth Circuit’s 2010 decision in favor of Eminem’s former production company in FBT Productions LLC v. Aftermath Records, artists such as Toto – whose recording contracts predated digital music sales – have taken to the courts arguing that they were underpaid on digital record royalties. Toto’s claims, like FBT’s and many other plaintiffs’ claims, focus on whether, under recording contracts, digital purchases are “sales” as opposed to higher-paying “licenses” or “leases.” Continue reading

Fight for the Fiend Skull Glenn Danzig v. Gerald Caiafa, et al. (C.D. Cal. 2014)


A legal battle is brewing: punk/heavy metal icon Glenn Danzig has sued his former Misfits bandmate, renowned bassist and singer Gerald “Jerry Only” Caiafa, for violations of various Misfits trademarks and logos.

Following in the footsteps of Black Flag  the filed complaint is another example of former bandmates’ battles over merchandise that remains profitable long after the initial group split up.  At the heart of this case is the Misfits’ iconic punk rock logo, the “Fiend Skull”. Continue reading

Judge Has “More Than a Feeling” About Nominative Fair Use: Donald Thomas Scholz v. Fran Migliaccio and Anthony Migliaccio

District Court denies Boston band leader preliminary injunctive relief against former bandmate

A federal court in Washington gave some “Peace of Mind” to former members of legendary rock band Boston when it denied Boston’s band leader a preliminary injunction in a trademark dispute.  Plaintiff Donald Thomas Scholz (“Scholz”) is the founder and band leader of Boston, and undisputed owner of all of Boston’s trademarks.  Fran Migliaccio and Anthony Migliaccio — a father-and-son duo know on stage as Fran and Anthony Cosmo (the “Cosmos”) — were members of Boston from the early 1990s until a few years ago.  Scholz still tours and creates new music under the Boston name, while the Cosmos perform under Fran’s own name, and the moniker “World Classic Rockers.” Continue reading

“Wish You Would Step Back From That Ledge (And Sign This) My Friend”

Third Eye Blind guitarist not entitled to royalties after failing to sign partnership agreement

A recent lawsuit between two members of a 1990’s and early aughts alternative rock band whose debut album sold over 6 million copies in the U.S. should open the eyes of new artists to the importance of getting partnership agreements, and not just lyrics, written down on paper. Continue reading

Grammy Nom for Client Rebecca Pidgeon’s Album “Slingshot”

Congratulations to client Rebecca Pidgeon on the Grammy nomination for her album “Slingshot” for Best Engineered Album, Non-Classical, (Helik Hadar, engineer; Bernie Grundman, mastering engineer). Ms. Pidgeon, the acclaimed singer-songwriter and actress, also co-wrote nearly all its songs, composing primarily with longtime collaborator, Grammy-winning producer Larry Klein and one song, a country waltz entitled “Baby Please Come Home Again,” with her husband, Pulitzer prize-winning playwright/film director David Mamet. “Slingshot is direct, searingly honest, and filled with melodies and arrangements that move effortlessly between jazzy folk, pop, Americana, and even rock,” (All Music)… “a stunning gathering of tunes,” (Chicago Tribune). The 55th Grammy Awards ceremony will air live Sunday, February 10, 2013 at 8pm EST on CBS. Continue reading

The Clock is Ticking to Take Action Against Infringement

The recent case of Urbont v. Sony Music Entertainment, 11 Civ. 4516 (S.D.N.Y. March 27, 2012), highlights the disagreement among some federal courts as to when the three-year statute of limitations for copyright infringement claims begins its countdown. Directly at issue is whether the clock starts ticking when the infringement starts (the “injury rule”), or when the plaintiff discovers the infringement (the “discovery rule”). Continue reading

Madonna’s Not the Only “Material Girl”: Judge Denies Summary Judgment

In California, a Federal Court Judge denied the defendent’s — Madonna’s — Motion for Summary Judgment that she is the “senior trademark user” of the “Material Girl” mark. This now clears the path for a lawsuit by the plaintiff, clothing company L.A. Triumph, which has sold a “Material Girl clothing line since 1997. Continue reading