Cameo Clips

GROUP NAMES/TRADEMARK RIGHTS

A music group didn't have a protectible trademark interest in the name 'Vokal,' the U.S. District Court for the Middle District of Florida, Orlando Division, ruled. Vokal Inc. v. Nelly. The corporate entity for the R&B group Vokal had sued the Vokal Clothing Co. (VCC), a clothing manufacturer partially owned by hip-hop artist Nelly that sold 'Vokal' apparel. The complaint included claims as an unregistered trademark under the federal Lanham Act as well as under Florida law, where the plaintiff had registered 'Vokal' as a trademark.

Granting summary judgment for the defendants, the district court stated: 'In regard to secondary meaning, the Plaintiff has testimony from its principals that the band began using the mark in 1993, and little else. The band has performed and sold its recordings sporadically at best. Neither the band nor its principals have ever reported a profit to the IRS. There is no record that the band ever paid for any advertising or promotion, and aside from some T-shirts and hats imprinted with the band's name, there is no indication of serious efforts to promote a connection between the band and its name in the mind of the public. As for public identification, [the music group's principals] say that they received calls from friends inquiring whether their band was affiliated with VCC or Nelly. Even if this hearsay evidence were admissible, it would not demonstrate that the public ' as opposed to some friends of the band members ' identifies 'Vokal' with the band's music.'

RECORD LABEL NAMES/TRADEMARK RIGHTS

Using 'M2 Entertainment' as the name of a record label didn't create a likelihood of consumer confusion with the plaintiff's use of 'M2' for its entertainment industry products, the U.S. Court of Appeals for the Ninth Circuit decided. M2 Software Inc. v. Madacy Entertainment, 03-55957. The plaintiff ' which owned a federally registered trademark to use 'M2' with business management and interactive media for the film and music industries ' licensed database software to record companies, but also sold some interactive music products. Madacy subsequently founded M2 Entertainment to sell CDs of sports music. After M2 Software filed a trademark suit, the district court granted partial summary judgment for Madacy and a jury ruled in Madacy's favor. The Ninth Circuit agreed that some of the factors for determining likelihood of consumer confusion slightly favored the plaintiff. But affirming, the Ninth Circuit noted: 'M2 Software, however, fails to discuss important distinctions in the marketing channels used. M2 Software promoted its M2 products in specialty music industry publications, whereas Madacy did not promote its M2 Entertainment CDs in these publications. Furthermore, M2 Software argues that both marks were launched at the same trade show. However, even though Madacy launched its M2 Entertainment record label at the same trade show, it did so nearly a decade after M2 Software launched its M2 products. ' [And] even though both M2 Software and Madacy offered their CDs for sale over the internet in general, and on 'Amazon.com' in particular, M2 Software failed to provide evidence of sales attributable to M2 Software's Web site. Finally, unlike Madacy's music albums, M2 Software's products were not sold in retail outlets.'

RIGHT OF PUBLICITY/VOICE BROADCASTS

A right-of-publicity claim over the rebroadcast of the plaintiff's performance in a radio show was preempted by federal copyright law, the Court of Appeal of California, Second Appellate Division, ruled. Lavery v. Westwood One Inc., B179672. Plaintiff Donna Lavery was a producer of the Denver, CO-based 'Troubleshooter Show,' nationally syndicated beginning in 2000. Lavery also appeared in the show as herself and as 'Prima Donna' but was discharged from her broadcast employment in 2001. She filed suit under Cal. Civil Code Sec. 3344 alleging that the defendants 'have used her voice, audio likeness, name, and her appellation [in continued broadcasts of the show] and to promote and publicize the show, on the radio and on Web sites.' The trial court found the right-of-publicity claim barred under Sec. 3344's news or public-affairs exception. Affirming on a different ground, the court of appeal explained in its unpublished opinion: '[U]ndisputed facts established that performing on the air in the role of Prima Donna was one of [Lavery's] regular job duties, and when she created her performance and the role she played, she did so in the course of her employment with the station. ' [W]hile Clear Channel Broadcasting was appellant's employer [in Denver], she prepared her work 'for hire' for the benefit of Troubleshooter Network, and the 'author' of the radio show was the person for whom her work was prepared, Troubleshooter Network [which  assigned its rights to Westwood One.]' The court went on to find Lavery's claim both within the subject matter of and equivalent to federal copyright law. Citing KNB Enterprises v. Matthews, 78 Cal. App. 4th 362 (2000), the court of appeal noted: 'As between the exclusive copyright holder and any actor, performer, model, or person who appears in the copyrighted work, the latter may not preclude the former from exercising the rights afforded under the exclusive copyright by claiming a violation of the right of publicity.'

GROUP NAMES/TRADEMARK RIGHTS

A music group didn't have a protectible trademark interest in the name 'Vokal,' the U.S. District Court for the Middle District of Florida, Orlando Division, ruled. Vokal Inc. v. Nelly. The corporate entity for the R&B group Vokal had sued the Vokal Clothing Co. (VCC), a clothing manufacturer partially owned by hip-hop artist Nelly that sold 'Vokal' apparel. The complaint included claims as an unregistered trademark under the federal Lanham Act as well as under Florida law, where the plaintiff had registered 'Vokal' as a trademark.

Granting summary judgment for the defendants, the district court stated: 'In regard to secondary meaning, the Plaintiff has testimony from its principals that the band began using the mark in 1993, and little else. The band has performed and sold its recordings sporadically at best. Neither the band nor its principals have ever reported a profit to the IRS. There is no record that the band ever paid for any advertising or promotion, and aside from some T-shirts and hats imprinted with the band's name, there is no indication of serious efforts to promote a connection between the band and its name in the mind of the public. As for public identification, [the music group's principals] say that they received calls from friends inquiring whether their band was affiliated with VCC or Nelly. Even if this hearsay evidence were admissible, it would not demonstrate that the public ' as opposed to some friends of the band members ' identifies 'Vokal' with the band's music.'

RECORD LABEL NAMES/TRADEMARK RIGHTS

Using 'M2 Entertainment' as the name of a record label didn't create a likelihood of consumer confusion with the plaintiff's use of 'M2' for its entertainment industry products, the U.S. Court of Appeals for the Ninth Circuit decided. M2 Software Inc. v. Madacy Entertainment, 03-55957. The plaintiff ' which owned a federally registered trademark to use 'M2' with business management and interactive media for the film and music industries ' licensed database software to record companies, but also sold some interactive music products. Madacy subsequently founded M2 Entertainment to sell CDs of sports music. After M2 Software filed a trademark suit, the district court granted partial summary judgment for Madacy and a jury ruled in Madacy's favor. The Ninth Circuit agreed that some of the factors for determining likelihood of consumer confusion slightly favored the plaintiff. But affirming, the Ninth Circuit noted: 'M2 Software, however, fails to discuss important distinctions in the marketing channels used. M2 Software promoted its M2 products in specialty music industry publications, whereas Madacy did not promote its M2 Entertainment CDs in these publications. Furthermore, M2 Software argues that both marks were launched at the same trade show. However, even though Madacy launched its M2 Entertainment record label at the same trade show, it did so nearly a decade after M2 Software launched its M2 products. ' [And] even though both M2 Software and Madacy offered their CDs for sale over the internet in general, and on 'Amazon.com' in particular, M2 Software failed to provide evidence of sales attributable to M2 Software's Web site. Finally, unlike Madacy's music albums, M2 Software's products were not sold in retail outlets.'

RIGHT OF PUBLICITY/VOICE BROADCASTS

A right-of-publicity claim over the rebroadcast of the plaintiff's performance in a radio show was preempted by federal copyright law, the Court of Appeal of California, Second Appellate Division, ruled. Lavery v. Westwood One Inc., B179672. Plaintiff Donna Lavery was a producer of the Denver, CO-based 'Troubleshooter Show,' nationally syndicated beginning in 2000. Lavery also appeared in the show as herself and as 'Prima Donna' but was discharged from her broadcast employment in 2001. She filed suit under Cal. Civil Code Sec. 3344 alleging that the defendants 'have used her voice, audio likeness, name, and her appellation [in continued broadcasts of the show] and to promote and publicize the show, on the radio and on Web sites.' The trial court found the right-of-publicity claim barred under Sec. 3344's news or public-affairs exception. Affirming on a different ground, the court of appeal explained in its unpublished opinion: '[U]ndisputed facts established that performing on the air in the role of Prima Donna was one of [Lavery's] regular job duties, and when she created her performance and the role she played, she did so in the course of her employment with the station. ' [W]hile Clear Channel Broadcasting was appellant's employer [in Denver], she prepared her work 'for hire' for the benefit of Troubleshooter Network, and the 'author' of the radio show was the person for whom her work was prepared, Troubleshooter Network [which  assigned its rights to Westwood One.]' The court went on to find Lavery's claim both within the subject matter of and equivalent to federal copyright law. Citing KNB Enterprises v. Matthews , 78 Cal. App. 4th 362 (2000), the court of appeal noted: 'As between the exclusive copyright holder and any actor, performer, model, or person who appears in the copyrighted work, the latter may not preclude the former from exercising the rights afforded under the exclusive copyright by claiming a violation of the right of publicity.'