Cameo Clips

RIGHTS IN BAND NAMES/MARVELETTES DISPUTE

The U.S. District Court for the Southern District of New York granted a motion for summary judgment by Katherine Schaffner and the estate of Gladys Horton, original members of the 1960s Motown vocal group The Marvelettes, in a suit against them by concert promoter Larry Marshak alleging false designation of origin. Marshak v. Schaffner, 11 Civ. 1104. The Marvelettes broke up in 1969 (Horton left in 1967); Marshak began using the name “The Marvellettes” in the 1970s with his own version of the group, and from 1979 to 2008 held federal trademark registration in the name for entertainment services. In 2011, Marshak filed suit under the federal Lanham Act over rights in the name.

District Judge Denise Cote explained: “Rights in a mark [by senior common law users like Schaffner and Horton] signifying a singing group are not abandoned by the owner upon the group's disbandment, so long as the owner continues to receive royalties from the sale of the group's previously recorded material. ' Schaffner and Horton's estate continue to receive royalties for both sales of recordings and radio plays.” (For purposes of her summary judgment ruling, Judge Cote did not decide whether Motown or the original Marvelettes owned the group's name.)

Judge Cote went on to note that Marshak's current “'Marvellettes' perform songs recorded by the original Marvelettes, and throughout the years Marshak has presented performers of approximately the same age as the contemporary age of the original Marvelettes. The danger of consumer confusion and deception is manifest, and indeed, has almost certainly been realized in this case.” Importantly, Judge Cote added, “Marshak's argument that he owns the mark for live performances while Motown owns it for musical recordings must fail.”

The U.S. Court of Appeals for the Second Circuit decided that a distributor with exclusive rights to Russian-language movies couldn't bar other companies from distributing DVDs with multiple soundtrack and subtitle options that included in Russian language only. Russian Entertainment Wholesale Inc. v. Close-Up International Inc., 11-957. Close-Up's parent company, Krupny Plan, had transferred to Close-Up the exclusive rights Krupny had obtained in Russian-language films for distribution for some films “only in the original version (in the Russian language)” and for other films “only in the original version (in the Russian language), as well as with English subtitles and voice-overs.”

The Second Circuit observed: “The scope of the exclusive rights Close-Up obtained through these agreements did not include the right to reproduce or to distribute non-Russian language DVDs or multilingual DVDs, with the single exception (after Jan. 1, 2008) of DVDs ' offering only English-language soundtrack or subtitle options. Rather, with the single noted exception, Close-Up obtained only the exclusive right to reproduce and distribute Russian-language-only DVDs. We recognize that DVD technology makes it possible for a viewer to choose among multiple soundtrack and subtitle options and, thus, that a DVD of a Russian film featuring, e.g., Spanish-language options could be programmed to allow a viewer to watch (1) the original Russian soundtrack with Spanish subtitles, (2) a Spanish soundtrack with no subtitles, or (3) the original Russian soundtrack with no subtitles. Close-Up ' and its predecessors-in-interest ' could have foreseen this technological possibility and bargained for different contractual language expressly precluding distributors of multilingual DVDs from making option (3) available to viewers of their DVDs. They did not. In this regard, the various agreements' silence is conclusive.”

RIGHTS IN BAND NAMES/MARVELETTES DISPUTE

The U.S. District Court for the Southern District of New York granted a motion for summary judgment by Katherine Schaffner and the estate of Gladys Horton, original members of the 1960s Motown vocal group The Marvelettes, in a suit against them by concert promoter Larry Marshak alleging false designation of origin. Marshak v. Schaffner, 11 Civ. 1104. The Marvelettes broke up in 1969 (Horton left in 1967); Marshak began using the name “The Marvellettes” in the 1970s with his own version of the group, and from 1979 to 2008 held federal trademark registration in the name for entertainment services. In 2011, Marshak filed suit under the federal Lanham Act over rights in the name.

District Judge Denise Cote explained: “Rights in a mark [by senior common law users like Schaffner and Horton] signifying a singing group are not abandoned by the owner upon the group's disbandment, so long as the owner continues to receive royalties from the sale of the group's previously recorded material. ' Schaffner and Horton's estate continue to receive royalties for both sales of recordings and radio plays.” (For purposes of her summary judgment ruling, Judge Cote did not decide whether Motown or the original Marvelettes owned the group's name.)

Judge Cote went on to note that Marshak's current “'Marvellettes' perform songs recorded by the original Marvelettes, and throughout the years Marshak has presented performers of approximately the same age as the contemporary age of the original Marvelettes. The danger of consumer confusion and deception is manifest, and indeed, has almost certainly been realized in this case.” Importantly, Judge Cote added, “Marshak's argument that he owns the mark for live performances while Motown owns it for musical recordings must fail.”

The U.S. Court of Appeals for the Second Circuit decided that a distributor with exclusive rights to Russian-language movies couldn't bar other companies from distributing DVDs with multiple soundtrack and subtitle options that included in Russian language only. Russian Entertainment Wholesale Inc. v. Close-Up International Inc., 11-957. Close-Up's parent company, Krupny Plan, had transferred to Close-Up the exclusive rights Krupny had obtained in Russian-language films for distribution for some films “only in the original version (in the Russian language)” and for other films “only in the original version (in the Russian language), as well as with English subtitles and voice-overs.”

The Second Circuit observed: “The scope of the exclusive rights Close-Up obtained through these agreements did not include the right to reproduce or to distribute non-Russian language DVDs or multilingual DVDs, with the single exception (after Jan. 1, 2008) of DVDs ' offering only English-language soundtrack or subtitle options. Rather, with the single noted exception, Close-Up obtained only the exclusive right to reproduce and distribute Russian-language-only DVDs. We recognize that DVD technology makes it possible for a viewer to choose among multiple soundtrack and subtitle options and, thus, that a DVD of a Russian film featuring, e.g., Spanish-language options could be programmed to allow a viewer to watch (1) the original Russian soundtrack with Spanish subtitles, (2) a Spanish soundtrack with no subtitles, or (3) the original Russian soundtrack with no subtitles. Close-Up ' and its predecessors-in-interest ' could have foreseen this technological possibility and bargained for different contractual language expressly precluding distributors of multilingual DVDs from making option (3) available to viewers of their DVDs. They did not. In this regard, the various agreements' silence is conclusive.”