Bit Parts

The U.S. District Court for the Southern District of California granted Victor Willis's request for $527,236 in attorney fees after Willis, an original member of the Village People, won his bid to recapture the copyrights in portions of songs he wrote. Following a trial earlier in 2015, Willis was awarded a 50% recapture right for writing the lyrics to 13 songs and 33% as a co-lyricist on another 11 songs. Scorpio Music (Black Scorpio) S.A. v. Willis, 11cv1557. The requested fees were for 1,311.7 billed hours, including paralegal work at $150 per hour and $500 to $550 per hour for Willis's co-lead-counsel Brian D. Caplan. In granting the attorney fees, Chief District Judge Barry Moskowitz noted: “First, Willis defeated Plaintiffs' claim that he could not unilaterally terminate his grants of copyright under 17 U.S.C. '203. Next, Willis prevailed on a series of summary judgment motions brought on the grounds of statute of limitations and laches. Finally, at trial, Willis prevailed on 13 of the 24 musical compositions, including [the Village People hit] 'YMCA,' which appears to be the most lucrative of the songs in dispute. Willis also won on Counter-Defendants' affirmative defenses of statute of limitations and estoppel.” Chief Judge Moskowitz added: “Willis is an author who incurred significant attorney's fees in trying to get back what he transferred to Plaintiffs, parties with superior bargaining power, decades ago. An award of attorney's fees is justified to encourage authors like Willis to assert their rights to regain their copyright interests and to deter production companies and other transferees of copyright from attempting to interfere with those rights.”

New York Federal Court Supports Descendibility of Lanham Act False Endorsement Claims

The U.S. District Court for the Southern District of New York refused to dismiss a false endorsement counterclaim under '43(a) of the Lanham Act brought by the Estate of Marilyn Monroe LLC. A.V.E.L.A. Inc. v. The Estate of Marilyn Monroe LLC, 12 Civ. 4828. Monroe LLC had counterclaimed, alleging unauthorized sales of Monroe merchandise in response to a declaratory judgment by A.V.E.L.A. as to intellectual property rights in the deceased legendary actress. Pointing to two federal cases out of New York, A.V.E.L.A. argued that a '43(a) false endorsement claim isn't descendible. One of those cases was brought unsuccessfully by actor/dancer Fred Astaire's widow, Robyn Astaire, over the “Fred and Adele Astaire Awards.” (Adele was Fred's sister.) Astaire v. McKenzie, 10 Civ. 4305 (S.D.N.Y. 2010). The other case was brought unsuccessfully by Babe Ruth's children over a calendar of famous baseball players. Pirone v. MacMillan Inc., 894 F.2d 579 (2d Cir. 1990). But adding to a growing body of case law in New York federal courts, District Judge Katherine Polk Failla decided: “Preliminarily, this Court rejects the [A.V.E.L.A.] Movants' contention that there is a blanket prohibition against false endorsement claims involving deceased celebrities.” District Judge Failla noted that “in Astaire the fact that the celebrity was deceased was considered by the court in the context of the issue of consumer confusion, rather than the underlying right to file a false endorsement claim.” As to Pirone , the district judge explained: “The Second Circuit reasoned that given the defendant's inclusion of a number of famous baseball players, an ordinarily prudent purchaser would not be misled into believing that Babe Ruth sponsored the calendar at issue. ' Contrary to the [A.V.E.L.A.] Movants' argument, however, the Court's analysis did not address whether a false endorsement claim involving a deceased celebrity was cognizable under Section 43(a). Rather, the deceased celebrity issue was only addressed in the context of a right of publicity claim under New York law.” Related counterclaims, such as trademark infringement and unfair competition, also survived A.V.E.L.A.'s motion to dismiss.

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance. His new book is Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England). For more, visit www.stansoocher.com.