Bit Parts

TV Show Titles/Copyright, Trademark Claims

The U.S. District Court for the Eastern District of Michigan dismissed copyright infringement and trademark claims filed over the title to the TV show “Dancing with the Stars.” Lahera v. The Walt Disney Co., 08-11677. Plaintiff Juan Lahera wrote the song “Rosana,” which contained the phrase “dancin' with the stars” and a song titled “Dancing with the Stars.” The district court noted of Lahera's copyright infringement claim over the first song: “There is no evidence that Defendants heard 'Rosana' nor is there evidence that Defendants had a reasonable opportunity to hear 'Rosana.' Lahera: 1) wrote the song while housed in a federal prison; and 2) does not provide evidence that the song was publicly released.” The court further explained: “'Dancing with the Stars' is the name of a television show; 'Rosana' is a musical composition. There is no similarity between the two works.” As for Lahera's claims under the Lanham Act, including for unfair competition, the court emphasized that a song isn't protectable as its own trademark under the Lanham Act.

Inter-Label Litigation/Insurance Coverage

The U.S. Court of Appeals for the Ninth Circuit decided that an insurer wasn't obligated to defend UMG Recordings under a commercial general liability policy from a suit over the right to product by the rap group Cash Money Click (CMC). UMG Recordings Inc. v. American Home Assurance Co., 06-56076. TVT Records had sued UMG's Def Jam label for copyright infringement and breach of contract. That suit alleged that Def Jam induced CMC members to keep recordings from TVT. In UMG's suit against American Home Assurance for coverage of the claims, the appeals court affirmed that UMG's policy with the insurer didn't cover the suit because the Def Jam/TVT litigation didn't involve accidental property damage or “personal and advertising injury.” In its unpublished opinion, the appeals court noted of the property damage claim that “TVT alleged in its complaint that Def Jam and [its then president Lyor] Cohen withheld the master recording of the CMC Album, which is an intentional act.” The appeals court noted of the latter claim: “Here, the CMC Album was not UMG's good. Rather, the [TVT] complaint states that TVT maintained ownership rights to the CMC Album.”

Trademark Infringement/Laches

The U.S. District Court for the Northern District of California ruled that laches barred trademark infringement and related claims over a travel agency's use of “Hobbit Travel.” Saul Zaentz Co. v. Wozniak Travel Inc., C 06-5421 MHP. The plaintiff owns the right to exploit and license trademarks created by J.R.R. Tolkien, author of “The Lord of the Rings” trilogy. The defendant has used “Hobbit Travel” since 1976. The district court noted that “plaintiff is not a trademark owner with few resources available to conduct a policing effort and defendant's use of the Hobbit Travel mark has not been secretive, negligible, or sporadic. ' [P]laintiff is charged with constructive notice of its potential causes of action against defendant beginning at least as early as 1988 when it received the first of multiple trademark search reports disclosing defendant's use of the name Hobbit Travel which has been open, continuous and not insignificant.”

The U.S. District Court for the Eastern District of Michigan granted summary judgment to video-game distributor Activision in a suit against it over use of a re-recording of the hit song “What I Like About You” included in the game “Guitar Hero Encore: Rocks the 80s.” The Romantics v. Activision Publishing Inc., 07-14969. Earlier this year, the district court had denied the plaintiffs' request for a preliminary injunction against distribution and promotion of the video game. In its most recent ruling, the district noted in part of the right-of-publicity claim by The Romantics, the rock band that had originally popularized the song: “It is undisputed that in this case, Defendants make no reference to The Romantics or to individual Plaintiffs in the advertising of the Game; that it is possible to play the Game and never reach the level of play necessary to encounter the Song; and that when the Song is encountered in the Game, it is clearly identified by the Song title and the words 'as made famous by The Romantics,' thus informing players and onlookers that The Romantics are not actually performing the Song.” The court added: “Here, Plaintiffs have failed to establish that their 'sound' is distinctive. '
[N]ot all Plaintiffs performed on the original master recording of the Song, and the lead featured singer on the original master recording of the Song is not a Plaintiff in this case.”

TV Show Titles/Copyright, Trademark Claims

The U.S. District Court for the Eastern District of Michigan dismissed copyright infringement and trademark claims filed over the title to the TV show “Dancing with the Stars.” Lahera v. The Walt Disney Co., 08-11677. Plaintiff Juan Lahera wrote the song “Rosana,” which contained the phrase “dancin' with the stars” and a song titled “Dancing with the Stars.” The district court noted of Lahera's copyright infringement claim over the first song: “There is no evidence that Defendants heard 'Rosana' nor is there evidence that Defendants had a reasonable opportunity to hear 'Rosana.' Lahera: 1) wrote the song while housed in a federal prison; and 2) does not provide evidence that the song was publicly released.” The court further explained: “'Dancing with the Stars' is the name of a television show; 'Rosana' is a musical composition. There is no similarity between the two works.” As for Lahera's claims under the Lanham Act, including for unfair competition, the court emphasized that a song isn't protectable as its own trademark under the Lanham Act.

Inter-Label Litigation/Insurance Coverage

The U.S. Court of Appeals for the Ninth Circuit decided that an insurer wasn't obligated to defend UMG Recordings under a commercial general liability policy from a suit over the right to product by the rap group Cash Money Click (CMC). UMG Recordings Inc. v. American Home Assurance Co., 06-56076. TVT Records had sued UMG's Def Jam label for copyright infringement and breach of contract. That suit alleged that Def Jam induced CMC members to keep recordings from TVT. In UMG's suit against American Home Assurance for coverage of the claims, the appeals court affirmed that UMG's policy with the insurer didn't cover the suit because the Def Jam/TVT litigation didn't involve accidental property damage or “personal and advertising injury.” In its unpublished opinion, the appeals court noted of the property damage claim that “TVT alleged in its complaint that Def Jam and [its then president Lyor] Cohen withheld the master recording of the CMC Album, which is an intentional act.” The appeals court noted of the latter claim: “Here, the CMC Album was not UMG's good. Rather, the [TVT] complaint states that TVT maintained ownership rights to the CMC Album.”

Trademark Infringement/Laches

The U.S. District Court for the Northern District of California ruled that laches barred trademark infringement and related claims over a travel agency's use of “Hobbit Travel.” Saul Zaentz Co. v. Wozniak Travel Inc., C 06-5421 MHP. The plaintiff owns the right to exploit and license trademarks created by J.R.R. Tolkien, author of “The Lord of the Rings” trilogy. The defendant has used “Hobbit Travel” since 1976. The district court noted that “plaintiff is not a trademark owner with few resources available to conduct a policing effort and defendant's use of the Hobbit Travel mark has not been secretive, negligible, or sporadic. ' [P]laintiff is charged with constructive notice of its potential causes of action against defendant beginning at least as early as 1988 when it received the first of multiple trademark search reports disclosing defendant's use of the name Hobbit Travel which has been open, continuous and not insignificant.”

The U.S. District Court for the Eastern District of Michigan granted summary judgment to video-game distributor Activision in a suit against it over use of a re-recording of the hit song “What I Like About You” included in the game “Guitar Hero Encore: Rocks the 80s.” The Romantics v. Activision Publishing Inc., 07-14969. Earlier this year, the district court had denied the plaintiffs' request for a preliminary injunction against distribution and promotion of the video game. In its most recent ruling, the district noted in part of the right-of-publicity claim by The Romantics, the rock band that had originally popularized the song: “It is undisputed that in this case, Defendants make no reference to The Romantics or to individual Plaintiffs in the advertising of the Game; that it is possible to play the Game and never reach the level of play necessary to encounter the Song; and that when the Song is encountered in the Game, it is clearly identified by the Song title and the words 'as made famous by The Romantics,' thus informing players and onlookers that The Romantics are not actually performing the Song.” The court added: “Here, Plaintiffs have failed to establish that their 'sound' is distinctive. '
[N]ot all Plaintiffs performed on the original master recording of the Song, and the lead featured singer on the original master recording of the Song is not a Plaintiff in this case.”