Cameo Clips

This month's cases:

The Apollo Theater Foundation Inc. (Apollo) v. Western International Syndication
Strange Music Inc. v. Strange Music Inc.
Briarpatch Ltd. L.P. v. Phoenix Pictures Inc.

A defendant company in a trademark infringement suit over “It's Showtime at The Apollo” waived its right to arbitration by explicitly representing that it wanted all claims resolved in court, the U.S. District Court for the Southern District of New York decided. The Apollo Theater Foundation Inc. (Apollo) v. Western International Syndication, 02 Civ. 10037 (DLC). The defendants, which produced and distributed the variety show “Showtime in Harlem,” had counterclaimed that they obtained a license to use the “Apollo” trademark. The license and two related agreements contained binding arbitration clauses. At first, Western argued that the plaintiff had waived its right to arbitration by seeking to litigate its claims. Later, however, Western argued that the claims should be subject to arbitration. Denying Western's motion to compel or to stay Apollo's claims in favor of arbitration, the district court noted, “In its opposition to the [earlier] Apollo Motion [to compel arbitration], Western took the position that Apollo had waived its right to arbitration and that none of the parties' claims should be dismissed, explicitly stating that it 'would gladly keep the parties' disputes before this Court.' … Western further [subsequently] emphasized that its primary contention was that this litigation should proceed and that Western's request for arbitration was to be considered only in the event that Apollo was not found to have waived its right to arbitration. Western's stance against arbitration was explicitly and repeatedly presented to this Court and was no doubt based upon careful evaluation of its legal strategy in this action.”

There was no likelihood of consumer confusion between a record label owned by a composer who recorded largely classical-based “new music” and a hip-hop label with the same name, a Manhattan federal district court held. Strange Music Inc. v. Strange Music Inc., 04 Civ. 02915 (PKC). Plaintiff Peter Grant filed a reverse-confusion suit alleging violation of Sec. 43(a) of the Lanham Act and N.Y General Business Law Sec. 360-l. He had founded his Strange Music label and registered the website strangemusic.com in 1998. The district court found Grant's mark suggestive but weak, noting “Plaintiffs point to only one publication in which they have consistently advertised and they have failed to show the expense of that advertisement. … Plaintiffs have set up a website to promote their works, but, again, plaintiffs fail to show the expense associated with that promotional vehicle. … There can be little doubt, however, with gross sales of $15,000 over a 5-year period, that plaintiffs' advertising budget is relatively small. [The defendants, who claimed they first became aware of the plaintiff's label in 2003, earned $5.590 million dollars from sales of their products on their Strange Music label.] Plaintiffs have not put forth any consumer studies to demonstrate that Strange Music is linked to Grant in the minds of consumers. Grant's success in the music industry has been limited. Grant's music has played on a number of radio stations and his work has been lauded by the new music community. … But grossing $15,000 over 5 years and the sale of 1310 CDs does not amount to 'success' within the confines of the secondary meaning test.” Also significant was that the parties' logos differed, their labels' music catered to different audiences and that the only evidence of actual confusion was that Grant's label had received phone calls and e-mails from the defendants' customers. [The defendants owned the website strangemusicinc.com.] In fact, the court stated, “Common sense dictates that upon arrival at each site, a consumer looking to purchase a CD by either party would immediately know if they had reached the wrong web-site.”

The Copyright Act preempted an unjust enrichment claim over the adaptation of a novel and screenplay into a film, though the complaint didn't cite a copyright claim, the U.S. Court of Appeals for the Second Circuit ruled. Briarpatch Ltd. L.P. v. Phoenix Pictures Inc., 03-7015. Gerard Rubin, the winding-up partner of Briarpatch Ltd., had filed suit in New York state court alleging that the owners of Briarpatch's general partnerships had cheated Rubin and the limited partnership out of monies from “The Thin Red Line,” other films and theater productions. After winning a judgment against the individuals, Briarpatch filed suit in New York state court against related parties, which then had the case removed to federal district court. The district court denied Briarpatch's motion to remand and granted summary judgment to the defendants. On appeal, the Second Circuit first found no diversity jurisdiction with a separate defendant corporation owned by the individual defendants in the first suit. The appeals court then ruled, however, that it had copyright jurisdiction over Briarpatch's unjust enrichment claim. In New York, the elements of an unjust enrichment claim are 1) that the defendant is enriched, 2) at the plaintiff's expense and 3) shouldn't be permitted to retain the enrichment. According to the district court, “the act that allegedly satisfies the second and third elements of unjust enrichment is the act of turning [James] Jones' novel and [Terrence] Malick's screenplay into a motion picture. This act would, in and of itself, infringe the adaptation rights protected by [17 U.S.C.] Sec. 106(2) (assuming these rights belong to plaintiffs). … While enrichment is not required for copyright infringement, we do not believe that it goes far enough to make the unjust enrichment claim qualitatively different from a copyright infringement claim.” The court also found Briarpatch's claim for declaratory judgment preempted and decided that it had supplemental jurisdiction over the remaining state law claims.

This month's cases:

The Apollo Theater Foundation Inc. (Apollo) v. Western International Syndication
Strange Music Inc. v. Strange Music Inc.
Briarpatch Ltd. L.P. v. Phoenix Pictures Inc.

A defendant company in a trademark infringement suit over “It's Showtime at The Apollo” waived its right to arbitration by explicitly representing that it wanted all claims resolved in court, the U.S. District Court for the Southern District of New York decided. The Apollo Theater Foundation Inc. (Apollo) v. Western International Syndication, 02 Civ. 10037 (DLC). The defendants, which produced and distributed the variety show “Showtime in Harlem,” had counterclaimed that they obtained a license to use the “Apollo” trademark. The license and two related agreements contained binding arbitration clauses. At first, Western argued that the plaintiff had waived its right to arbitration by seeking to litigate its claims. Later, however, Western argued that the claims should be subject to arbitration. Denying Western's motion to compel or to stay Apollo's claims in favor of arbitration, the district court noted, “In its opposition to the [earlier] Apollo Motion [to compel arbitration], Western took the position that Apollo had waived its right to arbitration and that none of the parties' claims should be dismissed, explicitly stating that it 'would gladly keep the parties' disputes before this Court.' … Western further [subsequently] emphasized that its primary contention was that this litigation should proceed and that Western's request for arbitration was to be considered only in the event that Apollo was not found to have waived its right to arbitration. Western's stance against arbitration was explicitly and repeatedly presented to this Court and was no doubt based upon careful evaluation of its legal strategy in this action.”

There was no likelihood of consumer confusion between a record label owned by a composer who recorded largely classical-based “new music” and a hip-hop label with the same name, a Manhattan federal district court held. Strange Music Inc. v. Strange Music Inc., 04 Civ. 02915 (PKC). Plaintiff Peter Grant filed a reverse-confusion suit alleging violation of Sec. 43(a) of the Lanham Act and N.Y General Business Law Sec. 360-l. He had founded his Strange Music label and registered the website strangemusic.com in 1998. The district court found Grant's mark suggestive but weak, noting “Plaintiffs point to only one publication in which they have consistently advertised and they have failed to show the expense of that advertisement. … Plaintiffs have set up a website to promote their works, but, again, plaintiffs fail to show the expense associated with that promotional vehicle. … There can be little doubt, however, with gross sales of $15,000 over a 5-year period, that plaintiffs' advertising budget is relatively small. [The defendants, who claimed they first became aware of the plaintiff's label in 2003, earned $5.590 million dollars from sales of their products on their Strange Music label.] Plaintiffs have not put forth any consumer studies to demonstrate that Strange Music is linked to Grant in the minds of consumers. Grant's success in the music industry has been limited. Grant's music has played on a number of radio stations and his work has been lauded by the new music community. … But grossing $15,000 over 5 years and the sale of 1310 CDs does not amount to 'success' within the confines of the secondary meaning test.” Also significant was that the parties' logos differed, their labels' music catered to different audiences and that the only evidence of actual confusion was that Grant's label had received phone calls and e-mails from the defendants' customers. [The defendants owned the website strangemusicinc.com.] In fact, the court stated, “Common sense dictates that upon arrival at each site, a consumer looking to purchase a CD by either party would immediately know if they had reached the wrong web-site.”

The Copyright Act preempted an unjust enrichment claim over the adaptation of a novel and screenplay into a film, though the complaint didn't cite a copyright claim, the U.S. Court of Appeals for the Second Circuit ruled. Briarpatch Ltd. L.P. v. Phoenix Pictures Inc., 03-7015. Gerard Rubin, the winding-up partner of Briarpatch Ltd., had filed suit in New York state court alleging that the owners of Briarpatch's general partnerships had cheated Rubin and the limited partnership out of monies from “The Thin Red Line,” other films and theater productions. After winning a judgment against the individuals, Briarpatch filed suit in New York state court against related parties, which then had the case removed to federal district court. The district court denied Briarpatch's motion to remand and granted summary judgment to the defendants. On appeal, the Second Circuit first found no diversity jurisdiction with a separate defendant corporation owned by the individual defendants in the first suit. The appeals court then ruled, however, that it had copyright jurisdiction over Briarpatch's unjust enrichment claim. In New York, the elements of an unjust enrichment claim are 1) that the defendant is enriched, 2) at the plaintiff's expense and 3) shouldn't be permitted to retain the enrichment. According to the district court, “the act that allegedly satisfies the second and third elements of unjust enrichment is the act of turning [James] Jones' novel and [Terrence] Malick's screenplay into a motion picture. This act would, in and of itself, infringe the adaptation rights protected by [17 U.S.C.] Sec. 106(2) (assuming these rights belong to plaintiffs). … While enrichment is not required for copyright infringement, we do not believe that it goes far enough to make the unjust enrichment claim qualitatively different from a copyright infringement claim.” The court also found Briarpatch's claim for declaratory judgment preempted and decided that it had supplemental jurisdiction over the remaining state law claims.