"DJ Logic" Not Famous Enough to Win Trademark Case Against Rapper "Logic"

Kibler v. Hall, No. 15-2516 (6th Cir. Dec. 13, 2016).

The Sixth Circuit affirmed summary judgment for defendants, holding that a disc jockey named "DJ Logic" was not famous enough to succeed on his trademark dilution claims against the rapper performing as "Logic" and there was no likelihood of consumer confusion.  As to the trademark infringement claim, the parties agreed that the DJ's mark was protectable so the Court focused on "the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa." and applied the 6th Circuit's balancing-test to find that "because no reasonable jury could find a likelihood of confusion based solely on a few instances of actual confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark infringement and related state law claims."  As to the dilution claim, 

Kibler’s evidence clearly falls short of the high threshold for fame under the Lanham Act. “DJ LOGIC” is simply in a different league from the marks that have met this threshold. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue here.

Copyright Termination By Majority Of Heirs Effective As To Lucrative Gospel Song; 6th Circuit

Brumley v. Albert Brumley & Sons, Inc., No. 15-5429 (6th Cir. May 16, 2016)

Four of six children of the author of the gospel song “I’ll Fly Away” successfully exercised their right to terminate the assignment of the song’s copyright to another one of their brothers, holds the Sixth Circuit.  The case centered on the 1976 Copyright Act’s termination right that allows an author to undo a prior transfer of his copyright and recapture all interests in the copyright for himself. 

In this case, Albert Brumley composed the song “I’ll Fly Away” (a gospel spiritual) in the late 1920s and owned the copyright through a publishing company.  In 1975, the publishing company was sold to two of Brumley’s sons, assigning and transferring all right title and interest in the song.  Brumley died in 1977, and in 1986 one of the sons bought out his brother’s interest.  In 2008, a sibling spat arose over the royalties for the song (approx. $300,000/year), and four of Brumley’s children served and filed a termination notice to share in the lucrative rights.  In December 2008, the four siblings filed a declaratory judgment action seeking a declaration that their termination notice was effective.  The owning brother (Robert) responded with two defenses, one of which – whether the song was a work made for hire – was tried before a jury, who found in favor of the four siblings.

On appeal, the Court found that the termination notice was effective.  Because the rights were transferred before 1978, the termination provisions in section 304 of the Copyright Act govern.  When Brumley’s wife passed away, each of his children held a one-sixth interest in the termination right.  Accordingly, the four siblings could exercise two-thirds of the termination interest with respect to the pre-1978 assingment.  Further, a post-transfer (1979) second “bill of sale and assignment” did not bargain away the wife’s termination replace and did not replace the 1975 contract.  The Court found that it should not lightly assume that a contract bargains away the centerpiece feature of the 1976 act.

License Agreements Preclude Copyright Infringement Claim; 6th Circuit

Murphy v. Lazarev, No. 14-5028 (6th Cir. Oct. 17, 2014) [File Name: 14a0790n.06]

The Sixth Circuit affirmed dismissal of copyright infringement and breach of contract claims by two American co-authors of a song, Almost Sorry, against a Russian pop artist because there were numerous licensing agreements that granted defendant sweeping permission to record and perform the song.  First, the Court held that the defendant did not waive his affirmative defense of "license," even though defendant did not file an answer to the amended complaint, because the plaintiffs were on notice of his affirmative defenses from an early stage in the lawsuit (when defendant filed a pro se letter in response to the complaint), thus satisfying the purposes of Rule 8.  Second, the Court held that defendant had a valid express sub-license to record the song until 2013.

Tim McGraw Didn't Have Access To Plaintiff's Demo Tape; Summary Judgment Affirmed In Defendants' Favor

Martinez v. McGraw et al., No. 13-5796 (6th Cir. filed Sep. 15, 2014).

The 6th Circuit affirmed summary judgment in favor of defendants in a copyright-infringement action wherein Plaintiff alleged that Defendants infringed his musical composition Anytime, Anywhere
Amanda with the musical composition Everywhere by country-artist Tim McGraw.  On appeal, the 6th Circuit found that the District Court applied the correct standard -- that defendant had an opportunity to access Plaintiff's song -- and that Plaintiff could not meet that standard.  "There is no dispute that Anytime was never published or distributed, never received radio play, is not available on iTunes, has not been performed by third parties, and that Martinez performed the song only in South Texas. Defendants’ only possible access would have been through the demo tape Martinez gave to Tomac."  The record, though, was devoid of any evidence that the demo tape had been passed along.  "Martinez’s theories of access through third-party intermediaries fall short. The district court properly determined that Martinez presented only 'attenuated chains of hypothetical transmittals' in support of his claim that Defendants heard or had a reasonable opportunity to hear Anytime. See Patry on Copyright § 9:29. The chain of access vanishes after Tomac gave the lone demo tape to Bartley in the fall of 1996, and the hypothetical transmittals fail to support
a reasonable inference that any Defendant or associate of any Defendant received a copy of Anytime, much less that Wiseman or Reid, the alleged infringers, heard or had a reasonable opportunity to hear Anytime and copied it before they co-wrote Everywhere in November 1996."  Lastly, there was no error because no evidence was presented that protectible elements of the two works are substantially similar.

6th Circuit: Bar Owner Liable For Vicarious Copyright Infringement

Broadcast Music, Inc. v. Meadowlake, Ltd. et al., No. 13-3933 (6th Cir. June 6, 2014) [decision].

The Sixth Circuit holds that an individual, who owned 95% a limited liability company that owned a restaurant that offered dancing and live music, was liable for vicarious copyright infringement (public performance right).  As the company’s chief (95%) owner and the restaurant’s ultimate decision maker, the individual defendant had the right and ability to supervise the infringing performances.  According to the 6th Circuit, "This case indeed falls within the heartland of vicarious liability."  The Court rejected the defendant's argument that his son was the day-to-day manager of the restaurant, that he claimed ignorance of the infringement, and that ownership via a limited liability company shielded liability.  "Either way, Roy profited from infringement at his restaurant while refusing to exercise his right to stop it. And so either way, Roy remains vicariously liable."

Country Music Infringement Claim Survives Dismissal

Bowen v. Paisley et al., No. 3:13-cv-0414 (M.D. Tenn. filed Dec. 3, 2013) [Doc. 58]

Plaintiff alleged that the defendants, including popular country music singers Brad Paisley and Carrie
Underwood, violated her copyright interests in the song “Remind Me,” a song that plaintiff
copyrighted and recorded.  Defendants moved to dismiss.  The Court denied defendant's motion to dismiss for failure to state a claim, finding that under the Iqbal standard, plaintiff had plausibly shown that, taken in combination, her lyrics and associated melodies, intonations, and usage could be sufficiently original to constitute protectable material, and that based on the Court's own comparison of the two works that defendants' hooks which incorporate that potentially distinctive combination of elements, are “substantially similar”.

6th Cir. Affirms Dismissal Of "Soul Men" TM Case

Moore v. Weinstein Co. et al., No. 12-5715 (6th Cir. filed Oct. 31, 2013) (decision here).

Plaintiff, Sam Moore of the group "Sam & Dave", appealed an adverse judgment on his trademark infringement and common law claims against the producers and distributors of a 2008 movie called "Soul Men" (starring Samuel L. Jackson and Bernie Mac) and its soundtrack.  The 6th Circuit affirmed dismissal.

Plaintiff argued that defendants had violated his right of publicity.  The Court disagreed, finding that the movie "added significant expressive elements to any purported use of Moore's identity."

Plaintiff also argued that defendants had committed trademark dilution under the Tennessee Trademark Act, of the mark SOUL MEN.  But, Plaintiff failed to provide evidence of the mark's fame.

Accordingly, the 6th Circuit affirmed summary judgment for defendants.

Songwriter's Widow Sanctioned; Default Judgments In Favor Of Assignee Not Vacated

Bridgeport Music, et al. v. Smith, et al., No. 12-1523 (6th Cir. May 1, 2013).

This action is based on default judgments entered in 2004 that plaintiff obtained against defendants for copyright infringement of the 1974 song "You’re Getting a Little Too Smart" ("Smart").  Plaintiff was the assignee of the songwriter's rights in the song.  In 2011, the songwriter's widow moved to vacate the default judgments, arguing that she, not Plaintiffs, was the legal owner of the copyright by operation of law at the time the lawsuit was filed.  The district court denied the motion, as well as her motion for reconsideration, and the widow appealed.  The Sixth Circuit affirmed, and granted Plaintiffs motion for damages and costs.

After stating the relevant facts, the Court began its analysis by determining who was entitled to what copyright interests in “Smart” under the renewal provisions of the Copyright Act:  "(1) Based on their assigned interest in the initial copyright, Plaintiffs had the right to sue for infringing acts occurring up through December 31, 2002, see 17 U.S.C. § 501(b) ..., and they had three years after that date to bring a cause of action. ... (2) Because Tilmon died prior to the renewal term, Tilmon’s contingency interest in the renewal copyright passed to Tilmon-Jones and Tilmon’s children, on January 1, 2003."

Next, the Court considered whether the widow, as a non-party to the litigation in which the judgments were entered, had standing.  The Court determined she did not have standing to bring a Fed. R. Civ. P. 60(b) motion.  Rule 60(b) provides in pertinent part that a “court may relieve a party or its legal representative” from a final judgment.  Nor was the widow in privity, or were here interests "strongly affected."

The Court also found that the widow's motion to vacate the judgments was untimely under Fed. R. Civ. P. 60(c)(1), which requires such motion be made within a reasonable period of time.  She did not file the motions until 6 years after constructive notice of the judgments (due to recordation of the judgments with the Copyright Office), and 7 years after they were entered.  The motions also were barred by a release the widow signed in another action.

Lastly, the Sixth Circuit sanctioned the widow and her counsel, pursuant to Fed. R. App. P. 38 and 28 U.S.C. § 1912.  "The conduct of Tilmon-Jones and her counsel was objectively and patently meritless and a waste of judicial resources. Tilmon-Jones maintains that her appeal is not frivolous because the question of whether a nonparty has standing under Fed. R. Civ. P. 60(b) was not obviously without merit. This may be true, but it does not obviate the fact that her appeal was utterly without merit because it was untimely and barred by a release. We find that this appeal is frivolous and that sanctions are appropriate."

6th Circuit Rules On Copyright Issue

Severe Records, LLC v. Rich et al., No. 09-6175 (6th Cir. Sep. 23, 2011).

Plaintiff Mark Christopher “Chris” Sevier authored a song entitled “Better.” Defendant Shanna Crooks recorded the song and, because they were pleased with the results, they co-authored and recorded a second song, “Watching Me Leave.” Their relationship then collapsed, Crooks signed as a recording artist with unrelated recording and management companies, and various

accusations and altercations followed, precipitating this action. Sevier and his recording company, Severe Records, LLC (collectively, “Plaintiffs”) filed suit, alleging what Sevier characterized as a “novel” claim of copyright infringement against Crooks and

others for preventing Plaintiffs from commercially exploiting the two songs through threats contained in cease-and-desist letters and requests to music retailers that the songs not be offered for sale. Plaintiffs also sought a declaratory judgment regarding the authorship of the songs and ownership of the copyrights to the two songs. The district court dismissed the amended complaint for failing to state a claim of copyright infringement and declined to consider Plaintiffs’ pendent state law claims or issue a declaratory judgment. The 6th Circuit affirmed the district court’s dismissal of the copyright infringement claim and reversed its dismissal of the

declaratory judgment claim.

There is no allegation anywhere in the amended complaint that Crooks did anything with the musical composition “Better” other than utilize the sound recording that she and Sevier created and that she was admittedly permitted to use for commercial or non-commercial gain. Indeed, Plaintiffs conceded in paragraph 735 of their amended complaint that “[t]he Defendants did not engage in unauthorized copying, but rather, their actions prevented Plaintiffs from copying.” That ends the inquiry; no claim for copyright infringement was properly alleged. Plaintiffs’ allegation that “Crooks attempted to transfer and did transfer an interest in the composition ‘Better’, [sic] which she did not own, to the Rich Defendants” is not the same thing as creating an improper copy of “Better.” We read nothing in the plain language of the Copyright Act, 17 U.S.C. § 106, to suggest that such a transfer constitutes copyright infringement. We expressly decline Plaintiffs’ invitation to grossly expand copyright infringement causes of action to include any acts that create barriers to a copyright holder’s ability to fully exploit that copyright.