In Case Involving The Name of a Band, The U.S. Supreme Court Rules Disparagement Clause of Lanham Act Unconstitutional

Matal v. Tam, No. 15-1293 (U.S. June 19, 2017)

The United States Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional under the Free Speech Clause of the First Amendment.  The disparagement clause of the Lanham Act, Section 2(a), prohibited the registration of trademarks that my, “disparage ... or bring ... into contemp[t] or disrepute” any “persons, living or dead.” 15 U.S.C. §1051(a).

An Asian-American rock band, “The Slants,” were refused registration of their band name based on a 2(a) rejection that “the slants” is a derogatory term for Asians. The Supreme Court held that the disparagement clause was not narrowly drawn enough to prevent trademarks that support discrimination. The court stated that the clause, “reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”

Beastie Boys Awarded Attorneys Fees For Copyright Infringement, But Reduced Amount

Beastie Boys v. Monster Engergy, 1:12-cv-06065-PAE (SDNY filed 06/15/15) [Doc. 216].

After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional".  Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.

Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation

Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).

The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA.  "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.

First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard.  The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.

Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act.  "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB."  Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB.  Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff.  To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff.  Accordingly, Hard Rock was granted summary judgment dismissing the case.

Band Refused Trademark Registration For Name "The Slants"

In re Simon Shiao Tam, Serial No. 85472044 (TTAB Sep. 26, 2013).

A band sought to register its name "The Slants" with the U.S. Patent & Trademark Office.  Registration was refused under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark “consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols under Trademark Act Section 2(a).”  The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register.

The TTAB found, "Thus, it is abundantly clear from the record not only that THE SLANTS, used for the identified services, would have the 'likely meaning' of people of Asian descent but also that such meaning has been so perceived and has prompted significant responses by prospective attendees or hosts of the band’s performances. The evidence of public perception of the meaning of THE SLANTS, as used in connection with applicant’s services, shows that meaning to be a derogatory reference to people of Asian descent."  The TTAB also rejected the applicant's argument that it had "good intentions" (e.g., taking ownership of a disparaging term): "the fact that applicant has good intentions with its use of the term does not obviate the fact that a substantial composite of the referenced group find the term objectionable".  Lastly, the TTAB found that the record established that the slang term “slant” or its plural “slants,” when used to indicate
ethnicity, is disparaging to a substantial composite of the referenced group.

Green Day's Use Of Illustration During Concert Was Fair Use, But Attorney's Fees Denied

Seltzer v. Green Day, Inc. et al., No. 11-56573 [D.C. No. 2:10-cv-02103] (9th Cir. Aug. 7, 2013).

The 9th Circuits affirmed summary judgment in favor of the defendants, but vacated the attorney's fees award, in an artist's action alleging violations of the Copyright Act and the Lanham Act relating to the rock band Green Day's unauthorized use of an illustration ("Scream Icon") in the video backdrop of its stage show.

The Court found that use of the illustration in the video backdrop was a fair use under the Copyright Act: it was transformative, the illustration was a widely disseminated work of street art, the illustration was not meaningfully divisible, and the video backdrop did not affect the value of the illustration.  As to the trademark claims, the artist failed to establish any trademark rights.  In vacating the attorney's fees award under the Copyright Act, the Court found that even though defendant was successful on their fair use defense, the plaintiff did not act objectively unreasonably ("there is simply no reason to believe that Seltzer should have known from the outset that his chances of success in this case were slim to none.").

Viacom Denied Attorney's Fees in TM Dispute With Gibson Guitars

Gibson Guitar Corp. v. Viacom Inc'l, Inc., No. 12-cv-10870 (C.D. Cal. July 18, 2013) [Doc. 51].

Plaintiff owns a trademark for the "FLYING V" mark and sued Viacom for trademark infringement relating to SpongeBob Square Pants "alleging that Flying V SpongeBob SquarePants ukuleles have been advertised and distributed without Gibson's authorization".  The Court previously granted Viacom's motion to dismiss for failure to state a claim, and Viacom moved for attorney's fees under the Lanham Act.  The Court denied the motion.  "The court finds that Gibson's case against Viacom is not 'exceptional' in the sense of the Lanham Act. The fact that allegations are insufficient to survive a motion to dismiss does not in itself render a complaint groundless under Lanham Act."

Trademark Claim Over Band Name Dismissed For Lack Of Standing And Failure To State A Claim

Newsboys v. Warner Bros. Records Inc. et al., No. 3:12-cv-0678 (M.D. Tenn. - Nashville filed July 11, 2013) [Doc. 41].

Plaintiffs filed suit under the Lanham Act against defendants -- music distributors and the band New Boyz -- alleging trademark infringement of the mark NEWSBOYS.  The court concluded that the plaintiffs Newsboys Inc. lacked standing to pursue its claims because the other plaintiff, Wesley Campbell, is the sole owner of the Newboys trademark.  Also, the Court concluded that because Campbell's registered trademark is limited to "live musical performances of a religious nature rendered by a group," he had failed to allege plausible facts of the likelihood of confusion of the two groups.

Black Keys Sue For Unauthorized Use Of "Howlin'" In Casino Ads

Carney et al. v. Chesky Records, Inc., No. 13-cv-0405 (S.D.N.Y. filed Jan. 17, 2013) (Batts, J.)

The Black Keys sued in New York federal court  "to put an immediate stop to, and to obtain redress for, Defendant's blatant and purposeful infringement of the copyright in Plaintiffs' musical composition entitled 'Howlin' For You'."  (Complaint, para. 1).  Defendants allegedly created and publicized commercial advertisements for casinos which prominently feature significant portions of the composition without authorization.  Plaintiffs' claims are for copyright infringement, false designation of origin (under section 43(a) of the Lanham Act), and common law unfair competition.

Zappa/Ryko Dispute Update

A reader emailed us asking for an update on earlier postings (January 2008) about a dispute between the Estate of Frank Zappa and the Rykodisc label.

The docket sheet indicates that after some initial scheduling issues, defendant Rykodisc filed a motion to dismiss and for a more definitive statement in June 2008 (Docket no. 17).  On Sept. 3, 2008, the court granted defendant's motion to dismiss plaintiff's Lanham Act claims (i.e., trademark claims), but denied the motion for a more definitive statement (Fed.R. Civ. P. 12(e)).  (Docket no. 25).  Unfortunately, the order refers to an August hearing for its reasoning, the transcript of which is not available.

Thereafter, defendant answered the amended complaint, and the parties are now litigating issues concerning leave to serve interrogatories. 

[Zappa v. Rykodisc, Inc.; case no. 08-cv-00396-WHP (S.D.N.Y. filed 1/15/08)]

Lennon - Complaint

Below is the complaint in Lennon et al. v. Premise Media Corp., L.P. et al., No. 08-cv-3813-SHS (S.D.N.Y. filed April 22, 2008). A couple highlights:

Paragraph 20 - noting the influence of Internet bloggers

Paragraph 23 - alleging that the defendants obtained synch licenses to use other songs in the film. Does this implicate bad-faith or willfulness? If Defendants' affirmative defense is Fair Use, there is split authority on whether bad-faith precludes a fair use defense. Judge Leval (and others) argue that a defendant's bad faith has no place in fair use analysis.

Paragraph 25 - end credits list Imagine, but do not state that permission was granted. Again, how does this implicate bad-faith or willfulness? Fair use?

Paragraph 36 - seeks permanent injunction and damages on copyright claim

THIRD CLAIM - is based on The Lanham Act sec. 43(a), infringement of unregistered mark. Does Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) foreclose this claim? Dastar holds that the section 43(a) does not apply to claims arising out of a failure to attribute or credit the origin of creative work; rather, such claims are cognizable under the Copyright Act. Are Plaintiffs making such a claim? See Contractual Obligation Productions LLC v. AMC Networks Inc., No. 04-cv-2867, 4/7/08 N.Y.L.J. "Decision of Interest" (S.D.N.Y. March 25, 2008). It appears that rather than alleging that Defendants are failing to credit the origin of Imagine, Plaintiffs' claim is a sponsorship claim.

Exhibits A & B - Noticeably absent is an SR registration. Imagine is a Pre-72 work; thus, Plaintiffs include publishers of the song, but not a record label. However, state common law copyright may protect Pre-72 recordings - why do Plaintiffs omit a common law claim from their complaint?

Read this doc on Scribd: Lennon v Premise Media Corp COMPLAINT

Trademark Issue in Usher Copyright Suit?

Straughter v. Raymond, No. 08 cv 2170-CAS-CWX (C.D.Cal. filed Apr. 1st, 2008) is a copyright infringement action brought pro se by the author of a composition against the performer Usher arising out of Usher's sound recording "Burn" appearing on the album "Confessions". It appears that plaintiff's composition was previously performed with authorization by an earlier artist, and that Usher sampled that recording. It is not clear whether the label and/or publisher for the earlier recording of the composition are parties to the suit.

What grabbed OTCS attention to this case was plaintiff's third claim under the Lanham Act:

33. Mr. Straughter is a highly successful and well known Grammy-winning artist, composer, producer and performer. He has established a reputation at the top of his field and achieved world wide renown, expending substantial amounts of time and money to maintain the goodwill he has established.

34. Defendants and their representatives have distributed and provided goods and services in interstate commerce in connection with Plaintiff’s goodwill, notoriety and ownership interest in the copyright and Defendants have realized substantial income from the provision and sale of such goods and services.

35. Defendant’s use of Plaintiff’s sound recording and/or his copyrighted song in the performance of “Burn” is likely to cause confusion, mistake or deception by misleading consumers and the trade into believing that Plaintiff licensed or otherwise authorized the use of their performance, or that the “Burn” composition and Confessions Album associated with or otherwise endorsed by Plaintiff. Defendants conduct is in willful and deliberate violation of section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a) (1) (A) and highly damaging to Plaintiff’s reputation and specific financial entitlements.

36. Defendants have profited and continue to profit from their unlawful conduct and will, unless restrained, further impair Plaintiff’s goodwill and reputation, and Plaintiff will suffer irreparable injury which cannot be adequately calculated or compensated solely by money damages.

Reading this count reminded us of the recent holding in Contractual Obligations Productions LLC v. AMC Networks, Inc., No. 04 cv 2867, 4/7/08 NYLJ "Decision of Interest" (S.D.N.Y. decided Mar. 25, 2008) which cited Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) for the proposition that the Lanham Act does not apply to claims arising out of failure to credit or attribute the origin of a creative work.

Trademark Issue in Usher Copyright Suit?

Straughter v. Raymond, No. 08 cv 2170-CAS-CWX (C.D.Cal. filed Apr. 1st, 2008) is a copyright infringement action brought pro se by the author of a composition against the performer Usher arising out of Usher's sound recording "Burn" appearing on the album "Confessions". It appears that plaintiff's composition was previously performed with authorization by an earlier artist, and that Usher sampled that recording. It is not clear whether the label and/or publisher for the earlier recording of the composition are parties to the suit.

What grabbed OTCS attention to this case was plaintiff's third claim under the Lanham Act:

33. Mr. Straughter is a highly successful and well known Grammy-winning artist, composer, producer and performer. He has established a reputation at the top of his field and achieved world wide renown, expending substantial amounts of time and money to maintain the goodwill he has established.

34. Defendants and their representatives have distributed and provided goods and services in interstate commerce in connection with Plaintiff’s goodwill, notoriety and ownership interest in the copyright and Defendants have realized substantial income from the provision and sale of such goods and services.

35. Defendant’s use of Plaintiff’s sound recording and/or his copyrighted song in the performance of “Burn” is likely to cause confusion, mistake or deception by misleading consumers and the trade into believing that Plaintiff licensed or otherwise authorized the use of their performance, or that the “Burn” composition and Confessions Album associated with or otherwise endorsed by Plaintiff. Defendants conduct is in willful and deliberate violation of section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a) (1) (A) and highly damaging to Plaintiff’s reputation and specific financial entitlements.

36. Defendants have profited and continue to profit from their unlawful conduct and will, unless restrained, further impair Plaintiff’s goodwill and reputation, and Plaintiff will suffer irreparable injury which cannot be adequately calculated or compensated solely by money damages.

Reading this count reminded us of the recent holding in Contractual Obligations Productions LLC v. AMC Networks, Inc., No. 04 cv 2867, 4/7/08 NYLJ "Decision of Interest" (S.D.N.Y. decided Mar. 25, 2008) which cited Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) for the proposition that the Lanham Act does not apply to claims arising out of failure to credit or attribute the origin of a creative work.