Bit Parts

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 Castel added: “UMG contends that a 1994 agreement superseded a provision of the 1985 agreement [i.e., Paragraph 3.04] that requires the renegotiation of royalties between plaintiffs and UMG for new recording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.”