Cameo Clips

COPYRIGHT TRANSFER/RETAINED RIGHT TO SUE

The U.S. Court of Appeals for the Fifth Circuit decided that a music publisher that assigned 50% of its song copyrights to a third party could pursue an infringement action over two of the songs ' even though the copyright assignment agreement stated it included “all claims for infringement of the copyrights whether now or hereafter existing.” In the Matter of Isbell Records Inc., 09-40343. In 2004, Alvert Music assigned a 50% interest in songs it owned to Bridgeport Music. Alvert Music had earlier sued DM Records alleging infringement of two of the compositions, “Dazzey Duks” and “Whoomp! (There It Is).” After Alvert's assignment to Bridgeport, the Eastern District of Texas granted DM Records' motion to dismiss Alvert's infringement suit on the ground that the copyrights transfer now prevented Alvert from pursuing DM Records.

Reversing and remanding, District Judge Kurt Engelhardt of the Eastern District of Louisiana, sitting in the Fifth Circuit by designation, noted in his appeals court ruling: “The Assignment contains two essential clauses. The first states that Alvert Music assigned to Bridgeport 'fifty percent (50%) of [its] interest now owned or subsequently procured in the universe-wide copyright in and to the ' musical composition.' The second states that Alvert Music assigned to Bridgeport 'all of the universe-wide right, title, and interest of the undersigned, vested or contingent, therein and thereto, including all claims for infringement of the copyrights whether now or hereafter existing, for the maximum terms of copyright.' ' If the second clause is read to mean that Alvert Music assigned all of its rights to pursue copyright infringement claims related to the compositions, then it would also necessarily mean that Alvert Music had assigned all of its interest in the compositions, given that the second clause also stated that Alvert Music assigned 'all of [its] interest' in the compositions. This result would contradict the clear language of the first clause, which states that Alvert Music assigned only 50% of its interest in the musical compositions. ' The proper reading of the two clauses is that the second clause operates as a clarification of the 50% interest assigned in the first clause. Thus, the second clause clarifies that the 50% share is a full share, rather than an income, participation, royalty, or some other limited share in the copyright.”

The U.S. District Court for the District of Colorado granted a motion by well-known snowboard and ski filmmaker Warren Miller to intervene in litigation over who had the right to grant use of “Warren Miller” persona rights to a production company for the sports film Refresh. Warren Miller Entertainment Inc. (WME) v. Level 1 Productions Inc., 09-cv-02254-CMA-BNB. In 1988, Warren Miller had entered into purchase agreements with WME's predecessor-in-interest giving the latter ownership of Miller trademarks and related intellectual property. Miller also entered into a series of independent contractor agreements with WME's predecessor-in-interest. The last agreement, which terminated on Dec. 31, 1999, acknowledged ' as had the earlier independent contractor agreements ' that WME “owns the exclusive right, in perpetuity, in all media, to the name, the personal endorsement, use of voice, and the likeness of Warren Miller, only when used with its existing business, and the fruits of its related efforts.” The agreement further stated: “The intention of this Agreement is also to clarify and agree that Warren A. Miller is free to use his own name however he desires so long as he does not infringe upon the exclusive rights [herein].”

In 2009, Miller's personal services company granted to Level 1 Productions “such rights it may have in Miller's name, voice, image, or likeness and to use such rights in the production and distribution (including advertising and promotion)” of Refresh. WME filed a trademark infringement suit against Level 1. Warren Miller filed a motion to intervene as of right or permissively under Rule 24 of the Federal Rules of Civil Procedure.

District Judge Christine M. Arguello noted that WME had responded to the intervention motion by claiming “that it was not seeking a determination of the contract rights between it and Mr. Miller, but, rather whether [d]efendant's alleged use of the WARREN MILLER Mark in and in connection with the movie Refresh 'constituted a legitimate act of identification, or an illegal effort to traffic in the goodwill associated with the WARREN MILLER Mark,' which would cause [plaintiff] to lose control over the Mark and would be 'devastating to a huge part of [plaintiff's] business.' For these reasons, [p]laintiff contends that only its and Defendant's interests are at issue.”

But Judge Arguello decided: “The [c]ourt disagrees with [p]laintiff. Mr. Miller and [his] Warren Miller Company are entitled to intervene as a matter of right. The rights Warren Miller Company conveyed to [d]efendant in the September 2009 contract are central to the instant litigation. Mr. Miller believed he could convey rights in his name, voice, image, or likeness pursuant to his interpretation of the prior independent contractor agreements and Purchase Agreements with [p]laintiff and [p]laintiff's predecessor-in-interest. Mr. Miller's name, voice, image, or likeness are the properties that are the subject of the instant litigation. A finding of trademark infringement or infringement of a right of publicity against [d]efendant would certainly impair or impede Mr. Miller's interests in the aforementioned properties as well as his and Warren Miller Company's commercial interests with [d]efendant. No existing party adequately represents these interests.”

The U.S. District Court for the Middle District of Tennessee denied a defense Rule 12(b)(6) motion to have a copyright infringement suit filed by the owners of the song “Rocky Top” dismissed for failure to state a claim. House of Bryant Publications LLC v. A & E Television Networks, 3:09-0502. “Rocky Top,” the official state song of Tennessee, was written by the late Felice and Boudleaux Bryant. House of Bryant filed suit over the unlicensed use of 12 seconds of the song in an episode of the A&E network's City Confidential series. The episode focused on a planned contract murder in Knoxville, TN, and included “Rocky Top” in scenes of a University of Tennessee (UT) football game, as the UT band's instrumental version of the song is heard. A&E claimed a transformative fair use, arguing “the brief use of the song 'Rocky Top' merely illustrates an aspect of the culture of Knoxville, Tennessee and the experience of attending a UT football game,” that the “song appears in the [Episode] as just one of many elements of a larger factual report about the city” and that “recording background noise at the football game was necessary for the documentary filmmakers to accurately portray the atmosphere in and around Knoxville at the time of the factual events portrayed in” the City Confidential episode.

But District Judge Aleta A. Trauger explained: “Here, because the defendant seeks the dismissal of the plaintiff's [c]omplaint without the benefit of discovery, there is nothing to 'ease' the court's task of finding a transformative use. Moreover, ' the transformative nature of 'Rocky Top' is unapparent from a basic viewing of the Episode. In the Episode, there is no allusion to 'Rocky Top' prior to its playing, and there is no perceptible attempt to actually place 'Rocky Top' in any sort of larger context. ' [J]ust before 'Rocky Top' plays, there is a general discussion of UT being a haven for college football, but there is no commentary, criticism or even discussion of 'Rocky Top.' ' A viewing of the Episode simply does not indicate that the individuals responsible for the Episode wished to comment on the lyrics of 'Rocky Top' or that they wished to use [the UT instrumental version of] that song to make a larger point about Knoxville.”

Judge Trauger also noted: “The plaintiff correctly argues that, at this stage, the court must accept as true the plaintiff's allegations that it regularly licenses 'Rocky Top' and that allowing this type of infringement to go unpunished would harm the plaintiff's licensing market.” But the court added that the A&E could later raise a fair use defense at the summary judgment phase.