Bit Parts

The U.S. District Court for the Southern District of New York decided several motions in advance of the upcoming trial, scheduled for April 21, in the Beastie Boys' suit over the unlicensed remixes of the rap group's songs in a video promoting Monster Energy. Beastie Boys v. Monster Energy Co., 12 Civ. 6065. The Beastie Boys (including the interests of deceased group member Adam Yauch) allege copyright infringement and Lanham Act violations. District Judge Paul A. Engelmayer has ruled that the Beastie Boys can amend the complaint to add copyright infringement of the group's “Pass the Mic.” Monster contested inclusion of claims over “Pass the Mic” sound recordings because the Beastie Boys obtained interests in these after the original suit was filed. But District Judge Engelmayer stated, “The Court is unpersuaded. Page 1 of the Assignment Agreement expressly states that it is effective as of December 2, 1999. Contract law gives effect to such retroactive arrangements.” Meanwhile, the Beastie Boys moved to exclude the testimony of Monster's witness, branding expert Erich Joachimsthaler. Judge Engelmayer found: “Joachimsthaler's analysis of Monster's marketing efforts, and his reasoning as to why the [contested] Video added little to those efforts, is based principally upon his experience and research in the world of marketing, which qualify him to opine on such matters. Contrary to the Beastie Boys' objections, it is not necessary that Joachimsthaler construct a formal model to offer expert testimony on these points.” However, Joachimsthaler's expert report stated that Monster's video created no lasting association with the Beastie Boys in consumer's minds. The district judge barred Joachimsthaler from testifying on this as to Lanham Act liability. “Monster appears to conflate Joachimsthaler's concept of 'likelihood of association' with the Lanham Act liability standard of 'likelihood of confusion,'” Judge Engelmayer observed, “and depending on the manner of its presentation at trial, the Court has some concern that Joachimsthaler's testimony could be mistakenly understood as reformulating the liability standard.”

ICM Partners Escapes Personal Jurisdiction in Film Suit in Washington State

The U.S. District Court for the Eastern District of Washington decided it lacked personal jurisdiction over the talent agency ICM Partners in a suit alleging the film Red Tails infringed a screenplay that Washington resident John Dudley wrote. Dudley v. Lucasfilm Ltd., 13-CV-5107. Dudley claimed his lawyer had sent ICM Partners a copy of the screenplay. Chief U.S. District Judge Rosanna Malouf Peterson noted: “Plaintiff could possibly establish that ICM Partners committed an intentional act by providing Plaintiff's screenplay to other defendants without informing them of the nature of the screenplay. However, Plaintiff has not demonstrated that ICM Partners 'expressly aimed' its alleged intentional act at the forum state. The only aimed action alleged by Plaintiff is that Plaintiff's attorney sent a copy of his screenplay to ICM Partners in California. The letter did not come from a Washington address and did not identify Plaintiff as being a resident of Washington. ' Plaintiff's argument that ICM Partners should have known that a film would eventually be distributed in Washington State is insufficient to establish purposeful direction.” Chief Judge Peterson went on to rule that, pending ICM's submission of billed-time logs, she is willing to award discretionary attorney fees under Washington's long-arm statute, RCW 4.28.185(5), for the hours that ICM Partners lawyers reasonably spent on the jurisdictional issue.

In Suit Against Sony Music, Toto Is Denied Access To Apple/UMG Agreements

The U.S. District Court for the Northern District of California denied a bid by the music group Toto to obtain, for their music royalty litigation against Sony Music, agreements between Apple and UMG Recordings that were key to a Ninth Circuit ruling over how digital download royalties are to be shared. In F.B.T. Productions LLC v. Aftermath Records, 621 F.3d 958 (9th Cir. 2010), the Ninth Circuit had decided that producers of Eminem's early works were entitled to 50% of Aftermath/UMG's digital download income from those recordings. A federal magistrate denied Toto's motion to compel non-party Apple to turn over the UMG agreements for Toto to use in its litigation against Sony, in the Southern District of New York. Northern District of California Judge Jon S. Tigar observed: “Toto claims that its agreements with Sony are similar to the agreements at issue in F.B.T., but the full agreements in that case were filed under seal. Toto wants to compare the agreements with its own in order to establish that its agreements with Sony are license [rather than sale] agreements, just as the Apple/UMG agreements were held to be in F.B.T.” But Judge Tigar agreed with the magistrate's conclusion that “Toto failed to assert that the agreements it seeks are factually connected to [its] underlying suit in any way, but instead are sought in order to 'go beyond the four corners of the Ninth Circuit's F.B.T. decision in Toto's own litigation with Sony.” Toto Inc. v. Sony Music Entertainment, 13-mc-80168.

Rulings in Advance of Beastie Boys' Trial Against Monster Energy

The U.S. District Court for the Southern District of New York decided several motions in advance of the upcoming trial, scheduled for April 21, in the Beastie Boys' suit over the unlicensed remixes of the rap group's songs in a video promoting Monster Energy. Beastie Boys v. Monster Energy Co., 12 Civ. 6065. The Beastie Boys (including the interests of deceased group member Adam Yauch) allege copyright infringement and Lanham Act violations. District Judge Paul A. Engelmayer has ruled that the Beastie Boys can amend the complaint to add copyright infringement of the group's “Pass the Mic.” Monster contested inclusion of claims over “Pass the Mic” sound recordings because the Beastie Boys obtained interests in these after the original suit was filed. But District Judge Engelmayer stated, “The Court is unpersuaded. Page 1 of the Assignment Agreement expressly states that it is effective as of December 2, 1999. Contract law gives effect to such retroactive arrangements.” Meanwhile, the Beastie Boys moved to exclude the testimony of Monster's witness, branding expert Erich Joachimsthaler. Judge Engelmayer found: “Joachimsthaler's analysis of Monster's marketing efforts, and his reasoning as to why the [contested] Video added little to those efforts, is based principally upon his experience and research in the world of marketing, which qualify him to opine on such matters. Contrary to the Beastie Boys' objections, it is not necessary that Joachimsthaler construct a formal model to offer expert testimony on these points.” However, Joachimsthaler's expert report stated that Monster's video created no lasting association with the Beastie Boys in consumer's minds. The district judge barred Joachimsthaler from testifying on this as to Lanham Act liability. “Monster appears to conflate Joachimsthaler's concept of 'likelihood of association' with the Lanham Act liability standard of 'likelihood of confusion,'” Judge Engelmayer observed, “and depending on the manner of its presentation at trial, the Court has some concern that Joachimsthaler's testimony could be mistakenly understood as reformulating the liability standard.”