Rapper Enjoined From Using Burberry Trademarks

Burberry Ltd. v. Moise, No. 1:16-cv-05943 (S.D.N.Y. Aug. 15, 2016) [Doc. 30].

Luxury brand Burberry successfully obtained a preliminary injunction against rapper Perry Moise based on his use of various Burberry-related marks.  The preliminary injunction restrains Perry from using the marks, displaying the marks, using "Burberry Perry" or "Burberry" as usernames on his social media accounts, and otherwise engaging in activity associating himself with Burberry.  Perry was also ordered to remove all references to Burberry on his Soundcloud and iTunes pages, from his email address, and from his various social media accounts.  Plaintiff was ordered to post a $5,000 bond.

Band's Shut-Down Facebook Page Not A "Use In Commerce"; Injunction Vacated

Emerald City Mgmt., LLC v. Kahn, No. 15-40446 (5th Cir. Mar. 8, 2016) [decision].


The Fifth Circuit vacated a preliminary injunction ordering the leader of a band called "Downtown Fever" to transfer control of a Facebook account to the band's manager who had registered the mark "Downtown Fever."  The lower court had issued an injunction barring defendant from using the band name, and the defendant thereafter voluntarily de-activated the band's Facebook page.  Then, the lower court found that the plaintiff should be granted an injunction ordering the defendant to give control of the Facebook page.  However, the appeals court found that was an abuse of discretion because "neither shutting down a Facebook account nor blocking administrator access to a Facebook account constitutes 'use in commerce' of a trademark.  Because the Facebook page was not accessible to anyone, the defendant was not using the trademark.

Former Commodores Band-Member Properly Enjoined From Using "Commodores" Or Performing Under "Commodores" Name

Commodores Entertainment Corp. v. McClary, No. 14-14883 (11th Cir. Apr. 15, 2016).

The 11th Circuit affirmed a preliminary injunction enjoining the defendants from using the "The Commodores" mark and from performing under the name "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  The Commodores were a popular funk/soul group on the Motown label in the 1970s (hits included Brick House and Three Times a Lady).  In the early 1980s, two fo the original members of hte group left to embark on solo careers, including defendant McClary.  The remaining members, as the plaintiff corporation, continued to perform and registered four trademarks.  In 2014, defendant McClaray began performing songs made famous by the band in the 1970s with his own band called "The Commodores featuring Thomas McClary" or "The 2014 Commodores."  This use gave rise to litigation, and the lower court granted plaintiff a preliminary injunction.  The 11th Circuit affirmed, finding that defendant's use was likely to confuse and therefore plaintiff was likely to succeed on the merits, and further that the plaintiff had standing and had made a showing of irreparable harm.  Lastly, the Court found that there was no error with the distric court's conclusion that the defendants may be enjoined extraterritorially (i.e., outside of the United States).

Film Festival Temporarily Enjoined From Screening Aretha Franklin Documentary

Franklin v. Nat'l Film Preserve, No. 15-cv-1921 (D. Colo. filed 9/4/2015) [Doc. 14].

The Court issued a temporary restraining order enjoining the Telluride Film Festival from screening a documentary film about Aretha Franklin, which consisted primarily of previously unreleased footage from a 1972 concert.  The deed granting the film producer rights in the footage required Ms. Franklin's consent to use the footage, which defendant did not obtain.

The Court found that Ms. Franklin has a strong interest in her rights of publicity, and to the use of her name/likeness.  She also had a federal statutory right to prevent bootlegging.  17 USC 1101(1).  The Court found that the film, which essentially recreated the entire concert experience, was not a fair use, and that a TRO would preserve the status quo.

Third-Party Service Provider Subject To "Grooveshark" Injunction

Arista Records, LLC v. Tkach, No. 15-CV-3701 (AJN), 2015 BL 182234 (S.D.N.Y. June 03, 2015).

A third-party service provider is bound by and subject to the TRO and preliminary injunction in the Grooveshark case, finds Judge Nathan in the Southern District of New York.  The Court concluded that CloudFlare wasin active concert or participation with the Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the authoritative domain name server for the new Grooveshark sites, which connects users entering the Grooveshark domain names into a web browser to the specific IP address associated with that site; (2) CloudFlare provides other services designed to improve the performance of the new Grooveshark sites; and (3) CloudFlare began providing its services to grooveshark.li after it acknowledged receipt of the TRO.  Furthermore, for the purpose of determining whether CloudFlare is in active concert or participation with the Defendants, it is not determinative that CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare was bound by the TRO and is now bound by the existing preliminary injunction.

Iggy Azalea Granted Preliminary Injunction To Prevent The Posting Of Early Recordings

Kelley v. Primco Management, Inc., No. 14-cv-07263 (C.D. Cal. Jan. 12, 2015).

Pop star Iggy Azalea obtained a preliminary injunction based on claims that Defendants misappropriated the contents of her computer and began releasing infringing songs and music videos.  Defendants claims that they had authority to use Azalea's name, likeness and various intellectual property assets pursuant to a Recording Agreement.  Azalea claimed that the document was forged, and that was the key issue before the Court because no party disputed that Defendants had exploited Azalea's copyrights, trademarks and right of publicity.  The Court held an evidentiary hearing and discussed the evidence presented on whether the document was forged.  It concluded that, even though there was sharply conflicting testimony, Azalea had at the very least raised serious questions about the validity of the agreement, and therefore had raised serious questions going to the merits of her claims which were enough to grant a preliminary injunction.  The court then considered the factors necessary for a preliminary injunction -- likelihood of success on the merits, threat of irreparable harm, balancing the equities, and the public interest -- and found that an injunction was warranted.  Azalea was ordered to post a $20,000 bond.

Former Band Member Enjoined From Using "Commodores" Mark For His New Band

Commodores Entertainment Corp. v. Thomas McClary, 6:14-cv-1335 (M.D. Fla. dated Oct. 9, 2014).

The Court granted the band "The Commodores" a preliminary injunction enjoining one of its founding members from performing under the name “The Commodores featuring Thomas McClary” or “The 2014 Commodores.”

First, the Court found that Plaintiff has demonstrated a substantial likelihood of success on its trademark infringement claim.  Defendant had left the band in 1984.  "When members of a band dispute ownership of a mark associated with the band, courts have found that members who remain active and associated with the band have better title to the mark than those who do not."  Continuing, "Defendant no longer has a valid claim to ownership over the Marks. Rather, the band members who remained after Defendant left in 1984 have prevailing ownership because they maintained continuity with the group and have been in a position to control the quality of services of the Marks associated with the band name. Defendant has not put forward any evidence to suggest that he maintained quality or control over the Marks associated with The Commodores after he left; rather, it was the other original band members who stayed with the group that continued to control the nature and quality of the Marks, went on to win a Grammy, and further expanded the band’s fan base and recognition."  (Internal cit. om.).

The Court also found that there is a likelihood that consumers would confuse the Grammy award winning band, ‘the Commodores,’ with the ‘The Commodores featuring Thomas McClary’ and/or ‘The 2014 Commodores'.  Due to the trademark infringement, there was a presumption of irreparable harm, and the Court found the balance of equities in plaintiff's favor.

9th Circuit Reverses "Platters" Injunction Because No Presumption Of Irreparable Harm In Trademark Cases

Herb Reed Enterprises v. Florida Entertainment, No. 12-16868 (9th Cir. Dec. 2, 2013) [Decision].

The 9th Circuit reversed the district court’s grant of a preliminary injunction against defendants’ use of the mark “The Platters” in connection with a vocal group, holding that the likelihood of irreparable harm must be established, rather than presumed, by a plaintiff seeking injunctive relief in the trademark context, and that the record did not support a determination of the likelihood of irreparable harm.  Likelihood of success can not be collapsed into irreparable harm.  The 9th Circuit also found (affirming the district court) that: (i) earlier New York actions did not have res judicata effect -- there was no claim or issue preclusion; (ii) the claim was not barred by laches; (iii) Plaintiff had not abandoned the trademark.

Vegas Singer Enjoined From Using "Platters" Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. filed Feb. 1, 2012)[Doc. 26].

The Court entered a preliminary injunction enjoining a Las Vegas singer from using the name of 1950s vocal group The Platters. The decision traced the long-history of litigation between members of the band and their use of the band name, and then underwent the preliminary injunction standard for trademark infringement. Plaintiff showed a likelihood of success on its ownership in the mark, and that it acquired rights to the mark through prior use. Additionally, plaintiff established a likelihood of success on its claim that “The Platters featuring

Monroe Powell” is confusingly similar to “The Platters.”

Transfer and Contempt in Major Label v. Independent Distributor Case

Atlantic Recording Corp. v. BCD Music Group Inc., No. 08 Civ. 5201, NYLJ 5/14/2009 "Decision of Interest" (S.D.N.Y. May 7, 2009)

Defendant's motion to transfer denied. (Court goes through standard for 28 U.S.C. 1404(a))

Plaintiff's motion for contempt granted (for violating a preliminary injunction order entered on consent).

PI Denied in Record Label Trademark Suit

Medici Classics Productions LLC v. Medici Group LLC, No. 07-cv-09938, 12/30/08 NYLJ "Decision of Interest" (S.D.N.Y. Dec. 19, 2008).

Micro-boutique record label denied preliminary injunction - claimed trademark infringement against classical music recording label over use of MEDICI mark. Analysis under each of the Polaroid factors.

Plaintiff Medici Classics Productions LLC (MCP) was created in 2003. After lapse of 2004 registration, its "Medici Classics" trademark was issued on Jan. 2, 2008. Since 2003 MCP sold 494 copies of five CD recordings, and 335 copies of two DVD performances, by its principal for $7,000. Defendant Medici Group produces CDs, DVDs and other media relative to a broad range of classical music by renowned artists. Its "Medici Arts" and "Medici Masters" marked recordings are distributed in the United States by Naxos of America Inc. The court denied MCP a preliminary injunction barring Naxos and Medici Group's alleged infringement of trademark, finding MCP's "Medici Classics" mark weak. Discussing the Polaroid factors, the court found that plaintiff showed little likelihood of confusion. MCP's marks were the weaker due to minimal promotion and sales. The possibility of confusion was further decreased by the sophistication of buyers who were capable of distinguishing between the parties' distinct logos.

[Summary by New York Law Journal]