PUBLISHED BY HEATHER M. MORADO

I am an attorney at Morado Law, PLLC.  I practice in the areas of entertainment and intellectual property law.

Wednesday
Feb172016

Fox prevails in trademark suit over “Empire” series title

Twentieth Century Fox has defeated trademark infringement claims arising out of its popular television show, “Empire.”  “Empire” chronicles the life of fictional music mogul Lucious Lyon, whose wife and three sons struggle for control over his hip hop label, “Empire Enterprises.”  The show also features original music produced for the series, released by Columbia Records following the broadcast of each episode.

In response to a cease and desist letter from Empire Distribution, Fox brought suit for a declaratory judgment that the “Empire” series title did not infringe Empire Distribution’s trademark rights.  Empire Distribution is a record label, music distributor, and publishing company specializing in hip hop, rap, and R&B music, featuring famous artists such as T.I., Snoop Dogg, Kendrick Lamar, Too $hort, Tyga, and Busta Rhymes. 

Empire Distribution argued that the Court should evaluate its trademark claims by determining whether the two trademarks caused confusion among consumers.  However, the Court did not reach this issue, because it determined that Fox’s use of “Empire” was protected by the First Amendment.  Since the “Empire” show is an expressive work, Empire Distribution's trademark claims would only be actionable if the term “Empire” had no artistic relevance to the work; and/or if the show was explicitly misleading as to the source or content of the show.  Rogers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir 1989).

The Court reasoned that the term “Empire” had artistic relevance because the series told the story of characters struggling for literal control over a company called “Empire Enterprises,” as well as figurative control over the “empire” that Lucious had built.  Additionally, the series was set in New York, which is known as the “Empire State.”

In analyzing whether the “Empire” series title was misleading as to source, the Court focused solely on the intent and actions of Fox, rather than examining any evidence of actual confusion among consumers.  Although Empire Distribution had introduced significant evidence of actual consumer confusion, the Court held that this evidence was entirely irrelevant.  Since Fox had not made any explicit claim or misstatement as to the source of the show, the Court held that Fox had not misled consumers, and Empire Distribution’s trademark infringement claims were barred.  Accordingly, the Court granted Fox’s motion for summary judgment. 

The case citation is Twentieth Century Fox Television, et. al. v. Empire Distribution, Inc., Case No. CV 15-2158 PA. 

Friday
Mar272015

Congrats to client Kevin Lavitt

Congratulations to client Kevin Lavitt on the release of his EP, Planets.  Two years in the making, the eight-track release features the talents of numerous collaborators, including Alana Belle, Ariana DeBoo, Dave B, Kung Foo Grip, Mario Sweet, Sam Lachow, and Thig Nat.  The full album is available for download at DJBooth.net here.  Below is one of the soulful singles, enjoy:

Wednesday
Mar112015

Jurors reach verdict in "Blurred Lines" trial

The jury has reached a verdict in the “Blurred Lines” trial, finding that Robin Thicke and Pharrell Williams copied the Marvin Gaye song “Got to Give it Up.”  Although the jury found that the infringement was not willful, they awarded the Gaye estate nearly $7.4 million in damages.

Many music industry insiders as well as legal analysts have criticized the verdict as improperly lowering the bar for music copyright infringement.  The verdict is also hard to fathom given that the jurors were instructed to only consider copyrighted elements contained in the sheet music, and not the actual recording of “Got to Give it Up” (explained in my previous post here).  Although there will likely be an appeal, the decision is expected to have a chilling effect on the music industry.  

 

Monday
Mar022015

"Blurred Lines" copyright infringement trial

In a rare copyright infringement case that has reached the trial stages, this week, jurors will decide whether the song “Blurred Lines” by Robin Thicke, Pharrell, and T.I. infringes on the Marvin Gaye song, “Got to Give it Up.”  In response to cease and desist letters from the Gaye estate, Thicke, Pharrell, and T.I. preemptively brought suit in March of 2013, asking the Court for a declaratory judgment that the song “Blurred Lines” was non-infringing.  In response, the Gaye estate brought counterclaims alleging intentional copyright infringement.

In order to prevail on their infringement claims, the Gaye estate must show: 1) ownership of a valid copyright; 2) the defendants had access to “Got to Give it Up;” and 3) that “Blurred Lines” is substantially similar to “Got to Give it Up.”  Of these three elements, only the third is at issue in the case. 

Earlier in the case, the defendants unsuccessfully moved for summary judgment that “Blurred Lines” was non-infringing.  Although the motion was unsuccessful, the judge’s ruling contained a silver lining.  In his decision, Judge Kronstadt ruled that because the Gaye estate had failed to make sufficient sound recording deposits as part of their original copyright registration (governed by the former 1909 Copyright Act), at trial, the Gaye estate will only be allowed to cite to elements of the copyright that were included in their sheet music deposit.  This ruling will likely prove advantageous to the defendants, because the sound recording of “Got to Give it Up” contains numerous elements (including some of the vocals, the percussive instruments, keyboards, and bass parts) that were not included in the plaintiffs’ sheet music deposit accompanying their federal copyright registration. 

The case has also had its share of curiosities, including wild deposition testimony in which Thicke claimed that he was continuously high on Vicodin, vodka, and cocaine for an entire year and as a result, couldn’t have possibly written “Blurred Lines.”  In opening statements, counsel for the Gaye estate cautioned the jury that Pharrell and Thicke “will wink at you and they’ll be charming.  But keep one thing in mind.  They are professional performers.”   The trial is expected to be concluded this week.  Stay tuned for the verdict – and judge for yourself whether “Blurred Lines” is derivative of the Gaye original, below:

 

Thursday
Jul312014

Congratulations to client Perfume Genius

Congratulations to client Perfume Genius on the release of his subversive music video for the single “Queen,” from his upcoming LP “Too Bright.”  The song reached #6 on the Billboard emerging artists chart, and has also received favorable reviews by Pitchfork, Time Magazine, and Rolling Stone.  

The video explores the underlying rage caused by “gay panic,” with “an alternative universe Forrest Gump and Jenny, except with fluid genders and ever-shifting identities,” according to the press release.  Among other things, the video features a pack of baby pigs, a one-legged Elvis impersonator, computer smashing, business executives chowing down on giant shrimp, and more.  Enjoy: