Bit Parts

Band Names/Federal Trademark Dilution Act

The U.S. District Court for the Southern District of New York denied a motion for summary judgment by members of the band Hi-Five against RN'D Distribution in the music group's suit that alleged violation of the Federal Trademark Dilution Act (FTDA), 15 U.S.C.A. '1125(c). Irby v. Thompson, 05 Civ. 9935(LTS)(KNF). The district court explained that a FTDA plaintiff must show a defendant “'willfully intended to trade on the recognition of the famous mark' and caused or is likely to cause 'dilution by blurring,' or that the defendant 'willfully intended to harm the reputation of the famous mark' and caused or is likely to cause 'dilution by tarnishment.'” But the court found that the Hi-Five “have provided no evidentiary proffers to establish the mark's fame other than information contained in documents purporting to be printouts from the [Web site] of the Recording Industry Association of America (RIAA), for which they have not proffered the necessary foundational support and authentication pursuant to the Federal Rules of Evidence.”

Digital Royalties Suit/Motion to Dismiss Denied

The U.S. District Court for the Southern District of New York refused to dismiss a suit at the pleadings stage by members of the Allman Brother Band (ABB) that seeks 50% from digital exploitations of the band's classic Capricorn recordings. Allman v. UMG Recordings Inc., 08 Civ. 7113(PKC). Last year in a different case, Southern District Judge George B. Daniels dismissed a class action by the Allman Brothers that sought a 50% share of Sony Music's digital-exploitation income of the band's recording masters. Then earlier this year, Daniels accepted the band's amendment of the complaint to include the term “lease” that's in the group's Sony contract, instead of “license.” In the UMG case, Southern District Judge P. Kevin Castel found: “As the plaintiffs note, the relevant contract between plaintiffs and UMG contains several different royalty provisions, and without a record of UMG's methods for the digital distribution of plaintiffs' songs, it is not possible to determine which provision of the agreement governs.” Castel added: “UMG contends that a 1994 agreement superseded a provision of the 1985 agreement [i.e., Paragraph 3.04] that requires the renegotiation of royalties between plaintiffs and UMG for new recording configurations. ' However, the 1994 agreement does not expressly repeal paragraph 3.04 of the 1985 agreement, and it is not apparent at the pleading stage that the 1994 agreement necessarily governs the royalties owed plaintiffs for digital sales.”

Personal Manager/No Personal Jurisdiction

The U.S. District Court for the Southern District of New York denied a default judgment for musician Yngwie Malmsteen against his former manager, James Lewis, in a suit alleging that Lewis “secretly diverted” Malmsteen's income “with the knowledge and consent” of the artist's New York business managers Berdon LLP and Michael Mitnick. Malmsteen v. Berdon LLP, 1:05-cv-00958-RJH. A jury found against Berdon and Mitnick on Malmsteen's breach of contract and breach of fiduciary obligation claims, but the district judge ruled as a matter of law for Berdon and Mitnick on Malmsteen's fraud claim. Malmsteen argued in his motion for a default judgment against Lewis, who currently resides in California and previously lived in Connecticut, that Lewis was subject to personal jurisdiction in New York by entering into a conspiracy with Mitnick. But the district court noted: “After reviewing the portions of the record cited by plaintiff, the [c]ourt disagrees. Even viewing the facts in the light most favorable to plaintiff, the cited portions of the record do not demonstrate that Lewis and Mitnick agreed to do an unlawful thing, or to do a lawful thing in an unlawful manner. Because such an agreement is an essential element of a civil conspiracy under New York law, 20 N.Y. Jur.2d Conspiracy ' Civil Aspects '1 (2009), plaintiff's motion must be denied.”

Public Performance Right/Vicarious Liability

The U.S. District Court for the Eastern District of Virginia found a restaurant operator without a public performance license from ASCAP was liable for vicarious copyright infringement for songs artists played at the venue. EMI April Music Inc. v. White, 2:08cv332. According to the district court, “the record before the Court establishes that the Defendant possessed the right and ability to supervise the infringing conduct. The facts before the [c]ourt, as admitted, also reflect that the infringing music was being performed at Defendant's restaurant/pub for entertainment purposes, thus giving Defendant an obvious and direct financial interest in the exploitation of copyrighted material. ' Even when a restaurant proprietor instructs band members not to perform copyrighted music at his establishment, or inserts a provision to that effect in the band's contract, such proprietor cannot escape vicarious liability when he has a right to supervise and a financial interest in such performance.” The court added: “Despite a year of repeated warnings that he could not permit performers to infringe copyrights of ASCAP members, when ASCAP's investigator visited the establishment, he found that Defendant was permitting a band to play infringing music. Furthermore, after such visit, when given the opportunity to remedy such infringement by responding to ASCAP, Defendant failed to do so.”