Bit Parts

The U.S. Court of Appeals for the Fifth Circuit vacated a preliminary injunction that required the former bandleader of the Texas-based music group Downtown Fever to hand over control of Downtown Fever's Facebook page to the band's manager. Emerald City Management L.L.C. v. Kahn, 15-40446. After bandleader Jordan Kahn quit Downtown Fever, the band's manager Emerald City sued him for state and federal trademark infringement. The U.S. District Court for the Eastern District of Texas issued a preliminary injunction barring Kahn from using the “Downtown Fever” name, though the injunction didn't include the band's Facebook page. But after Kahn voluntarily deactivated the band's social media account, a federal magistrate for the Eastern District recommended Emerald City be granted a preliminary injunction ordering Kahn to give control of the Downtown Fever Facebook page to Emerald City. The district court then ordered Kahn to do so. When Kahn appealed, however, the Fifth Circuit “agree[d] with Kahn that neither shutting down a Facebook account nor blocking administrator access to a Facebook account constitutes 'use in commerce' of a trademark. ' As it is undisputed that the Facebook page is not accessible to anyone, Kahn's Facebook-related actions cannot be characterized as 'use in commerce' of a trademark” under the federal Lanham Act.

New York Federal Court Declines Request From Elvis Presley Enterprises To Obtain Royalty Documents From Sony Music for Litigation Against Arista Music in Germany

The U.S. District Court for the Southern District of New York denied Elvis Presley Enterprises' (EPE) bid to obtain documents from Sony Music Entertainment for a suit EPE filed in Germany against Sony-affiliate Arista Music for alleged underpayment of royalties from the commercial use of Elvis Presley sound recordings in Germany. In Re Application of Elvis Presley Enterprises LLC for an Order to Take Discovery Pursuant to 28 U.S.C. '1782. EPE was unhappy with Arista's response to a German court order to produce royalty-related documents, but hadn't asked the German court to cure that. Section 1782 provides: “The district court of the district in which a person [i.e., Sony Music] ' is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign ' tribunal.” In denying EPE's '1782 application, Southern District Judge Denise Cote noted the “application was brought approximately one year after EPE received documents from Arista” in the German litigation. Judge Cote concluded in part: “While the [U.S.] Court would ordinarily undertake an independent review of a '1782 request in an attempt to identify a targeted set of particularly relevant documents whose production would not impose an undue burden, the Court declines to do so here given the posture of the German proceedings, the timing of the '1782 application, the breadth of EPE's requests [which ask for 14 information categories dating back to 2008], and EPE's limited efforts to narrow its requests.”

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.