Bit Parts

Performers' Names/Trademarks

The U.S. District Court for the District of Nevada denied a motion to reconsider its previous ruling that allowed Korean artist 'Rain' to continue to use that name in the United States. Rain Corp. v. JYP Entertainment Ltd. (JYPE), 03:07-CV-00081-LRH-RAM. The plaintiff, which produces and performs as the Beatles tribute group 'Rain,' based its reconsideration motion on a letter it received from JYPE after the court's earlier ruling, which had denied a preliminary injunction against the Korean performer. Rain Corp. claims the letter was an admission there was a likelihood of confusion from Rain Corp. and JYPE both using 'Rain.' But the Nevada district court found: 'The bulk of the letter contends that JYPE has rights in the mark 'Rain' and demands that Plaintiff stop use of that mark where JYPE has registered the mark. ' The fact that JYPE concluded the letter by stating that it was for discussion and settlement purposes only does not detract from the fact that letter demands, in no uncertain terms, that Plaintiff 'immediately cease and desist all its activities under the mark 'Rain' or any confusingly similar variation thereof.'

Beginning Jan. 1, 2008, California's descendible right-of-publicity law, Calif. Civ. Code Sec. 3344.1, will apply to the wills of celebrities who died before the state statute originally took effect on Jan. 1, 1985. Under SB 771, signed into law by Gov. Arnold Schwarzenegger, the retroactive right will extend back 70 years from 1985. The California legislation, drafted by Sen. Sheila James Kuehl (D-Santa Monica), a former actress, was in response to recent federal court rulings in California and New York that the will of Marilyn Monroe, who died in 1962, failed to transfer any post-mortem publicity rights. Critics of SB 771 claim that it will interfere with parties who have been exploiting names and likenesses of celebrities who died before 1985. The new law may not help the estate of Monroe if a court decides that her domiciliary was New York, which currently has no descendible right of publicity, instead of California, where she
died.

Talent Agencies Act/Arbitration Clauses

The commissions dispute between TV judge Alex Ferrer and his former manager Arnold Preston is to be heard by the U.S. Supreme Court this term. The key issue to be decided is whether the Federal Arbitration Act preempts a ruling by the California Court of Appeal that the California Talent Agencies Act voided an arbitration clause in the agreement between Ferrer and Preston. Preston v. Ferrer, 06-1463. The brief for Preston's petition for a writ of certiorari noted 'the anti-arbitration ruling in this case impacts the entire profession, including Artist's Managers located outside of California who represent clients who reside in California or obtain employment in California. Since a very large part of the entertainment industry is centered in California, this means that Artist Managers nationwide are adversely affected by California's anti-arbitration ruling.'

The Court of Appeal of California, Second District, declined to sever unlicensed talent agent activities from domestic activities in a palimony agreement, thereby defeating a commissions claim by the former girlfriend of deceased musician Elliot Smith. Chiba v. Greenwald, B193173. Jennifer Chiba claimed that she was Smith's manager and agent under an oral agreement, as well as his 'homemaker, housekeeper, cook, secretary, bookkeeper and financial counselor.' The California Labor Commissioner found the Chiba/ Smith agreement void under the California Talent Agencies Act because Chiba lacked a talent-agent license. The superior court later dismissed Chiba's suit. Affirming, the court of appeal explained: 'The inconsistencies in the pleadings ' create a record on which the conclusion that the primary purpose of the parties in entering the agreement was the personal relationship, and that the illegal terms were secondary and could be abandoned while all of the other terms of the agreement remained enforceable, is not mandated.' In 2006, the California Court of Appeal did rule that severability may be applied to illegal talent-agent activities to uphold the lawful parts of a management contract. Marathon Entertainment Inc. v. Blasi, 140 Cal. App. 4^th 1001. That case is now before the California Supreme Court.

Taxation/Film Manufacturing

The Court of Appeal of California, Fourth District, decided that a California sales tax on a manufacturer of copies of motion pictures for shipment overseas didn't violate the import-export clause of the federal constitution. The court of appeal also decided that the duplicating process wasn't a tax-exempt import activity under California law. National Film Laboratories Inc. v. California State Board of Equalization, D049006. California-based National Film sent the copies it made to the California-based Sony Trans Com for examination for quality-control purposes and then for shipment to British Airways in England. The trial court found that the quality-control component made delivery of the movie copies by National Film to Sony an in-state sale, rather than 'irrevocably committed' to export. In its unpublished opinion, the court of appeal noted: 'The sales tax here was levied on sales that occurred entirely within the state of California, and thus it does not impose any burden on foreign business or create any special tariffs.'

Performers' Names/Trademarks

The U.S. District Court for the District of Nevada denied a motion to reconsider its previous ruling that allowed Korean artist 'Rain' to continue to use that name in the United States. Rain Corp. v. JYP Entertainment Ltd. (JYPE), 03:07-CV-00081-LRH-RAM. The plaintiff, which produces and performs as the Beatles tribute group 'Rain,' based its reconsideration motion on a letter it received from JYPE after the court's earlier ruling, which had denied a preliminary injunction against the Korean performer. Rain Corp. claims the letter was an admission there was a likelihood of confusion from Rain Corp. and JYPE both using 'Rain.' But the Nevada district court found: 'The bulk of the letter contends that JYPE has rights in the mark 'Rain' and demands that Plaintiff stop use of that mark where JYPE has registered the mark. ' The fact that JYPE concluded the letter by stating that it was for discussion and settlement purposes only does not detract from the fact that letter demands, in no uncertain terms, that Plaintiff 'immediately cease and desist all its activities under the mark 'Rain' or any confusingly similar variation thereof.'

Beginning Jan. 1, 2008, California's descendible right-of-publicity law, Calif. Civ. Code Sec. 3344.1, will apply to the wills of celebrities who died before the state statute originally took effect on Jan. 1, 1985. Under SB 771, signed into law by Gov. Arnold Schwarzenegger, the retroactive right will extend back 70 years from 1985. The California legislation, drafted by Sen. Sheila James Kuehl (D-Santa Monica), a former actress, was in response to recent federal court rulings in California and New York that the will of Marilyn Monroe, who died in 1962, failed to transfer any post-mortem publicity rights. Critics of SB 771 claim that it will interfere with parties who have been exploiting names and likenesses of celebrities who died before 1985. The new law may not help the estate of Monroe if a court decides that her domiciliary was New York, which currently has no descendible right of publicity, instead of California, where she
died.

Talent Agencies Act/Arbitration Clauses

The commissions dispute between TV judge Alex Ferrer and his former manager Arnold Preston is to be heard by the U.S. Supreme Court this term. The key issue to be decided is whether the Federal Arbitration Act preempts a ruling by the California Court of Appeal that the California Talent Agencies Act voided an arbitration clause in the agreement between Ferrer and Preston. Preston v. Ferrer, 06-1463. The brief for Preston's petition for a writ of certiorari noted 'the anti-arbitration ruling in this case impacts the entire profession, including Artist's Managers located outside of California who represent clients who reside in California or obtain employment in California. Since a very large part of the entertainment industry is centered in California, this means that Artist Managers nationwide are adversely affected by California's anti-arbitration ruling.'

The Court of Appeal of California, Second District, declined to sever unlicensed talent agent activities from domestic activities in a palimony agreement, thereby defeating a commissions claim by the former girlfriend of deceased musician Elliot Smith. Chiba v. Greenwald, B193173. Jennifer Chiba claimed that she was Smith's manager and agent under an oral agreement, as well as his 'homemaker, housekeeper, cook, secretary, bookkeeper and financial counselor.' The California Labor Commissioner found the Chiba/ Smith agreement void under the California Talent Agencies Act because Chiba lacked a talent-agent license. The superior court later dismissed Chiba's suit. Affirming, the court of appeal explained: 'The inconsistencies in the pleadings ' create a record on which the conclusion that the primary purpose of the parties in entering the agreement was the personal relationship, and that the illegal terms were secondary and could be abandoned while all of the other terms of the agreement remained enforceable, is not mandated.' In 2006, the California Court of Appeal did rule that severability may be applied to illegal talent-agent activities to uphold the lawful parts of a management contract. Marathon Entertainment Inc. v. Blasi, 140 Cal. App. 4 th 1001. That case is now before the California Supreme Court.

Taxation/Film Manufacturing

The Court of Appeal of California, Fourth District, decided that a California sales tax on a manufacturer of copies of motion pictures for shipment overseas didn't violate the import-export clause of the federal constitution. The court of appeal also decided that the duplicating process wasn't a tax-exempt import activity under California law. National Film Laboratories Inc. v. California State Board of Equalization, D049006. California-based National Film sent the copies it made to the California-based Sony Trans Com for examination for quality-control purposes and then for shipment to British Airways in England. The trial court found that the quality-control component made delivery of the movie copies by National Film to Sony an in-state sale, rather than 'irrevocably committed' to export. In its unpublished opinion, the court of appeal noted: 'The sales tax here was levied on sales that occurred entirely within the state of California, and thus it does not impose any burden on foreign business or create any special tariffs.'