Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Bit Parts
Florida Federal Court's Findings in Battle Over "LINEAR" Band Name Not So Linear
The U.S. District Court for the Southern District of Florida, Miami Division, issued a mixed ruling in litigation over rights to the band name LINEAR. Restivo v. Pennachio, 21-23388 (S.D.Fla. 2022). Since 2008, Charles Pennachio, a co-founder in the 1980s of LINEAR, has been battling Joseph Restivo, who Pennachio claims was a "hired gun" in the music group until 1994, over commercial use of "LINEAR." In 2013, Restivo obtained federal registration of the band name in the U.S. Patent and Trademark Office (USPTO) for "Entertainment in the nature of live performances, Entertainment, namely, live music concerts, Entertainment [sic], live performances by a musical band." In 2019, he filed an application with the USPTO to use the "LINEAR" mark for "[c]lothing, namely, shirts, sweaters, blouses, jackets, slacks, hats and baseball caps," and for "[a]dvertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others." (In 2017, the Trademark Trial and Appeal Board (TTAB) dismissed Pennachio's Cancellation petition to the 2013 registration. Pennachio's Notice of Opposition to the 2019 application is now before the TTAB.) South Florida District Judge Jose E. Martinez recently found in part: "Res judicata prohibits Pennachio from relitigating [Restivo's] registration of the LINEAR mark in 2013, but not his renewals." District Judge Martinez further found: "Restivo contends that because he is the owner of the LINEAR mark, Pennachio's dilution claims [under the Federal Trademark Dilution Act, 15 U.S.C. §11259(c)(6)] are preempted. His argument inherently fails because the validity of his ownership in the LINEAR mark is still at issue in this case. Although Pennachio cannot contest the validity of the 2013 Registration itself, his claims for fraud upon the USPTO in 2018 and 2019 [for Restivo's filings of Declarations of Use and of Incontestability] survive dismissal and are pending before this Court."
*****
|Second Circuit Agrees Federal Copyright Law Preempts Right of Publicity Complaint Over Sirius XM's Use of Howard Stern Show Archival Recordings
The U.S. Court of Appeals for the Second Circuit affirmed a district court ruling that right of publicity claims by California resident John Melendez, known for his "Stuttering John" persona on The Howard Stern Show from 1988 to 2004, were preempted by federal copyright law. Melendez v. Sirius XM Radio Inc., 21-1769 (2d Cir. 2022). Melendez sued under both California Civil Code §3344 and California common law. The complaint alleged that "approximately 13,000 hours of episodes" of the Stern radio show in which Melendez's "voice, name and identity are featured" were "digitally recorded and stored[,] and comprise[] the HSS Archives that are used to supplement the live recordings of the show on Sirius XM, to promote the show to Sirius XM's subscriber and listener base, and to generate advertising dollars for Defendant." But the U.S. District Court for the Southern District of New York granted Sirius XM's motion to dismiss by finding: "While it is true that Melendez's rights of publicity are independent of copyright (because his Attributes are not copyrightable), Melendez's claims are not qualitatively different from copyright infringement claims." In its affirmance, the Second Circuit noted: "[W]e agree with the district court that 'Melendez has not [pled] any facts plausibly suggesting that Sirius [XM's] intended audience could reasonably construe advertisements of the HS Show featuring Melendez as Stuttering John as Melendez's endorsement of Sirius XM or any of its non-HS Show channels.' … Any such inference would be as implausible as an audience somehow believing that (1) a network's advertisement for the broadcast of an upcoming National Football League game, containing video footage from a prior game, is a personal endorsement of that television network by every player featured in the game footage, or (2) a movie trailer containing excerpts from an upcoming movie played at a movie theatre, or on a television network, is a personal endorsement by the actors in that movie of that movie theatre and/or television network."
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
How Secure Is the AI System Your Law Firm Is Using?
In a profession where confidentiality is paramount, failing to address AI security concerns could have disastrous consequences. It is vital that law firms and those in related industries ask the right questions about AI security to protect their clients and their reputation.
COVID-19 and Lease Negotiations: Early Termination Provisions
During the COVID-19 pandemic, some tenants were able to negotiate termination agreements with their landlords. But even though a landlord may agree to terminate a lease to regain control of a defaulting tenant's space without costly and lengthy litigation, typically a defaulting tenant that otherwise has no contractual right to terminate its lease will be in a much weaker bargaining position with respect to the conditions for termination.
Pleading Importation: ITC Decisions Highlight Need for Adequate Evidentiary Support
The International Trade Commission is empowered to block the importation into the United States of products that infringe U.S. intellectual property rights, In the past, the ITC generally instituted investigations without questioning the importation allegations in the complaint, however in several recent cases, the ITC declined to institute an investigation as to certain proposed respondents due to inadequate pleading of importation.
The Power of Your Inner Circle: Turning Friends and Social Contacts Into Business Allies
Practical strategies to explore doing business with friends and social contacts in a way that respects relationships and maximizes opportunities.
Authentic Communications Today Increase Success for Value-Driven Clients
As the relationship between in-house and outside counsel continues to evolve, lawyers must continue to foster a client-first mindset, offer business-focused solutions, and embrace technology that helps deliver work faster and more efficiently.