BMI May Recover More Than Minimum Statutory Damages After Nightclub's Default

BMI v. Crocodile Rock Corp., No. 14-3891 (3d Cir. Oct. 30, 2015) (non-precedential opinion).

The Third Circuit held that performance rights organization BMI could recover a default judgment for more than the minimum statutory damages available under the Copyright Act.  The Court found that so long as the award falls within the limits set by statute, the trial court's discretion and sense of justice were controlling in setting the amount of the award, even in the case of a default judgment and where the defendant's alleged profits are less than the amount awarded.  Accordingly, the $35,000 award of statutory damages was affirmed.

Bob Marley Heirs Succeed On Appeal In Merchandising Case

Fifty-Six Hope Road Music v. A.V.E.L.A., No 12-17502 (9th Cir. Feb. 20, 2015).

The 9th Circuit Court of Appeals affirmed judgment in favor of Bob Marley's heirs based on defendants' use of Bob Marley's image on t-shirts and other merchandise in a manner likely to cause confusion as to Plaintiffs' sponsorship of approval of the merchandise.  Additionally, the Court found that Defendants have waived several defenses by failing to properly raise them in the district court.  The appellate court also found that the lower court had not abused its discretion in determining defendant's profits and there was a sufficient evidence to find that defendants willfully infringed plaintiff's rights.  Nor did the lower court err in awarding plaintiffs their attorney's fees, as plaintiffs were the prevailing parties, and defendants' conduct was willful.  Plaintiffs also succeeded on their tortious interference claims because Plaintiffs' licensing agent testified that one of Plaintiffs' licensees lost an order intended for Wal-Mart because defendant sold t-shirts there. Defendants did succeed, however, in dismissing the right of publicity claim because under Nevada law a publicity right successor waives its publicity rights when it fails to timely register its rights.

Injunction Entered On Use Of Platters Band Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. June 17, 2014).

The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance.  First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS.  There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants.  Second, the court found a likelihood of confusion under the 9th Circuit test.  Accordingly, a permanent injunction was appropriate.  Damages were also awarded for both domestic and foreign profits.

Statute Of Limitations Limits Damages Claim Against Jay-Z; Concert Profits Questionable Damages

Fahmy v. Jay-Z, et al., 07-cv-5715-CAS (C.D. Cal. decided. Dec. 9, 2011) [Doc. 309].

Plaintiff brought this copyright infringement action concerning the song Big Pimpin'. The Court concluded that plaintiff may recover damages from any infringement only within three years prior to the filing of his lawsuit unless he can provide other bases for equitably tolling the statute. The Court, however, was unpersuaded by any of the three bases offered by plaintiff for why the statutory period should be equitably tolled. The mere fact that plaintiff lived in Egypt and speaks little to no English did not toll the statutory period. Alleged misrepresentations by the record label did not toll the statute. Lastly, the existence of a prior judicial action did not toll the statute. "Ultimately, plaintiff cannot avoid the fact that he admittedly knew that Big Pimpin’ allegedly infringed Khosara, Khosara by December 2000, more than six years prior to filing the present lawsuit."

The Court next turned to the question of whether Jay-Z’s concert revenues are properly considered direct or indirect profits resulting from his allegedly infringing performances of Big Pimpin’. Because the Court determined that this question presented a triable issue, the Court reserved judgment as to whether plaintiff is able to prove the requisite causal nexus.

Judge Reduces TM Jury Verdict Award To Hendrix

Experience Hendrix, LLC v. Hendrixlicensing.com, Ltd. et al., No. 2:09-cv-00285 (W.D. Wash. filed Sep. 21, 2011) [Doc. 160].

Plaintiffs own various tradmarks incorporating Jimi Hendrix's name, image, signature, song titles and/or lyrics. Defendants used one or more of these federally registered markes on products bearing Hendrix's image or art he created. The case proceeded to trial on three issues: damages for trademark infringement, defendants' liability for violation of Washington's Consumer Protection Act, and upon a finding of liability, actual damages for the consumer protection violation. After trial, the jury deliberated and rendered a verdict in favor of plaintiffs awarding, on the infringement claim, actual damages of $306,650 and defendants' profits of $60,000.

The Court concluded that the evidence, when construed in the light most favorable to plaintiffs, permitted only one reasonable conclusion, which was contrary to the jury's verdict concerning lost profits. "Having entirely failed to carry their burden proving expenses, plaintiffs are not entitled, as a matter of law, to an award of lost profits."

The Court further concluded that the jury's awards for injury to reputation and injury to goodwill were contrary to the Court's instructions and unsupported by the evidence.

The Court denied plaintiffs' motion for attorney fees under the Lanham Act in light of defendants' overall success and lack of bad faith. However, Plaintiffs were entitled to attorneys fees under the state consumer protection claim -- which the Court limited to $50,000 (or 10% of the amount requested by Plaintiffs).

Lastly, the Court entered a limited permanent injunction.

Trademark Plaintiff Denied Infringement Damages

Rodgers v. Wright, 04 Civ. 01149 (RJH), NYLJ 1202484847172, at *1 (SDNY, Decided March 1, 2011)

Judge Holwell holds (1) plaintiff is not granted damages; (2) plaintiff is not granted attorneys' fees; and (3) the permanent injunction need not be modified.

Plaintiff Nile Rodgers, a founder of the music group Chic, brought the trademark infringement action against two singers who once performed as part of Chic, defendants Norma Jean Wright and Luci Martin. Rogers is the owner of a registered trademark in "Chic," and, along with his late partner Bernard Edwards, has exploited the mark in commerce continuously since 1977. Wright and Martin claimed no ownership of the mark, but had performed in the United States and abroad as "Ladies of Chic" and "Original First Ladies of Chic," and sometimes simply as "Chic." The Court previously found (1) that plaintiff's mark was protectable; (2) that defendants' uses of "Chic," "Ladies of Chic," and "Original First Ladies of Chic," were likely to cause confusion; (3) that defendants could not establish a fair use defense; and (4) that any relevant injunction should have extraterritorial effect. Thereafter, the Court permanently enjoined defendants and each of their agents, servants, employees, attorneys, and persons in active concert or participation with them from using or commercially exploiting the word "Chic" anywhere in the world, generally and specifically in connection with concert promotion, publicity, and performance; and also established other restrictions.

Plaintiff sought defendants' profits under Section 35 of the Lanham Act. The Court concluded that plaintiff had failed to establish that defendants acted with willful deception, and therefore that plaintiff was not entitled to an award of profits. "Having not presented any evidence of willfulness, and as it appears that defendants' actions were not willful, awarding damages in this case would be inappropriate."

Plaintiff also sought attorneys' fees. The Court denied the motion because plaintiff failed to show oppressive litigation tactics or bad faith.