Bit Parts

Film Production Company Loses Legal Malpractice Suit

The New York Appellate Division, First Department, decided that a legal malpractice suit against a law firm that was retained to help form a film production company should be dismissed. Candela Entertainment Inc. v. Davis & Gilbert LLP, 14687. Candela Entertainment and its co-founder Cynthia Newport sued the law firm Davis & Gilbert for allegedly failing to render proper advice on obtaining consent for transferring the rights in copyrighted materials used in the movie Dance Cuba . But the appellate court noted: “Plaintiffs never alleged that they would have abandoned or postponed the assignment of film rights and attendant intellectual property from the individual plaintiff's nonparty, nonprofit corporation to the plaintiff corporation, had they been advised by the law firm that the film involved licensing issues necessitating licensor consents in order to be freely marketable. The individual plaintiff had secured the licenses for materials used in the film before the assignment, and plaintiffs do not allege that they were unable to secure consents after the assignment.”

'“Iron Man Theme” Copyright “Owner” Settlement Doesn't Preclude Work-for-Hire Finding

The U.S. District Court for the Southern District of New York decided that Sony Music could argue that the “Iron Man Theme” was a work-for-hire when composer/record producer Jack Urbont created it for the Marvel company's Marvel Super Heroes TV show in the 1960s. Urbont v. Sony Music Entertainment, 11 Civ. 4516. Urbont sued over the alleged unauthorized use of the song and a recording of the “Iron Man Theme” in Ghostface Killah's 2000 album Supreme Clientele. In 1995, Marvel and Urbont had settled an infringement action by Urbont. The settlement agreement referred to Urbont as “owner” of the “Iron Man Theme.” But District Judge Naomi Reice Buchwald noted in the Supreme Clientele dispute that “where defendants [i.e., Sony Music] seek to raise a meaningful challenge to the plaintiff's infringement claim by positing ownership in a third party, the seeming absence of a dispute between the putative owners should not forestall such a challenge.” The district judge went on to rule “the Settlement does not cause us to reconsider our determination [of 1960s works] under the 'instance and expense' test that the Iron Man Composition is a work for hire. Accordingly, we find that Sony has established that Urbont is not the owner of the Iron Man Composition and we therefore dismiss Urbont's federal claims.”

No Federal Trademark Registration for “Slants” Band

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's refusal to issue a federal trademark registration for live performances to the Asian-American rock band The Slants. In Re: Tam, 2014-1203. The board found the name was disparaging within the meaning of '2(a) of the Lanham Act. The Federal Circuit noted: “The fact that the term 'slants' has some innocuous meanings ' and that some trademarks have issued with those innocuous meanings ' does not foreclose the possibility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common.” The appeals court concluded: “We find there is substantial evidence ' even without a marketing survey or some other quantitative measure of the term's offensiveness ' supporting the Board's finding that the mark is disparaging to a substantial composite of people of Asian descent.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He was the 2014 recipient of the State Bar of Texas Entertainment & Sports Law Section's “Texas Star Award.” Stan's new book, Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England), will be published in September 2015. He can be reached at [email protected] or via www.stansoocher.com.

Film Production Company Loses Legal Malpractice Suit

The New York Appellate Division, First Department, decided that a legal malpractice suit against a law firm that was retained to help form a film production company should be dismissed. Candela Entertainment Inc. v. Davis & Gilbert LLP, 14687. Candela Entertainment and its co-founder Cynthia Newport sued the law firm Davis & Gilbert for allegedly failing to render proper advice on obtaining consent for transferring the rights in copyrighted materials used in the movie Dance Cuba . But the appellate court noted: “Plaintiffs never alleged that they would have abandoned or postponed the assignment of film rights and attendant intellectual property from the individual plaintiff's nonparty, nonprofit corporation to the plaintiff corporation, had they been advised by the law firm that the film involved licensing issues necessitating licensor consents in order to be freely marketable. The individual plaintiff had secured the licenses for materials used in the film before the assignment, and plaintiffs do not allege that they were unable to secure consents after the assignment.”

'“Iron Man Theme” Copyright “Owner” Settlement Doesn't Preclude Work-for-Hire Finding

The U.S. District Court for the Southern District of New York decided that Sony Music could argue that the “Iron Man Theme” was a work-for-hire when composer/record producer Jack Urbont created it for the Marvel company's Marvel Super Heroes TV show in the 1960s. Urbont v. Sony Music Entertainment, 11 Civ. 4516. Urbont sued over the alleged unauthorized use of the song and a recording of the “Iron Man Theme” in Ghostface Killah's 2000 album Supreme Clientele. In 1995, Marvel and Urbont had settled an infringement action by Urbont. The settlement agreement referred to Urbont as “owner” of the “Iron Man Theme.” But District Judge Naomi Reice Buchwald noted in the Supreme Clientele dispute that “where defendants [i.e., Sony Music] seek to raise a meaningful challenge to the plaintiff's infringement claim by positing ownership in a third party, the seeming absence of a dispute between the putative owners should not forestall such a challenge.” The district judge went on to rule “the Settlement does not cause us to reconsider our determination [of 1960s works] under the 'instance and expense' test that the Iron Man Composition is a work for hire. Accordingly, we find that Sony has established that Urbont is not the owner of the Iron Man Composition and we therefore dismiss Urbont's federal claims.”

No Federal Trademark Registration for “Slants” Band

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's refusal to issue a federal trademark registration for live performances to the Asian-American rock band The Slants. In Re: Tam, 2014-1203. The board found the name was disparaging within the meaning of '2(a) of the Lanham Act. The Federal Circuit noted: “The fact that the term 'slants' has some innocuous meanings ' and that some trademarks have issued with those innocuous meanings ' does not foreclose the possibility that the term may also be used in an offensive manner, even when the non-disparaging meanings are more common.” The appeals court concluded: “We find there is substantial evidence ' even without a marketing survey or some other quantitative measure of the term's offensiveness ' supporting the Board's finding that the mark is disparaging to a substantial composite of people of Asian descent.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He was the 2014 recipient of the State Bar of Texas Entertainment & Sports Law Section's “Texas Star Award.” Stan's new book, Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England), will be published in September 2015. He can be reached at [email protected] or via www.stansoocher.com.