Oscar Peterson’s widow has filed a lawsuit against singer Hilary Kole for copyrright infringement by sharing unpublished recordings on which she performed as a vocalist The case was filed in United States District Court for the Southern District of New York
The complaint, Peterson v. Hilary Kolodin, 13-DV-0793, S.D.N.Y.(see complaint below) alleges that Kole distributed and performed copyrighted songs by the late pianist Oscar Peterson without permission.
Petersen died 6 years ago and was a world renowned jazz pianist pianist. He released over 200 recordings and received eight Grammy awards. He died in 2007, and his widow, Kelly Peterson, is the executorix of his estate. The lawsuit was brought by Peterson and a production company, Jayarvee, Inc., which also owns rights in the copyrighted works that are the subject of this copyright lawsuit.
Singer Hilary Kole Accused of Distributing Copyrighted Songs
According to the complaint, Hilary Kole is a former employee of Jayarvee who has recorded numerous copyrighted works, and thus knew or should have known that she was violating the exclusive rights of Peterson’s estate when she shared copies of the songs with a radio station.
The complaint alleges that in August 2006 shortly before Petersen died, he recorded four songs on which Hilary Kole performs as vocalist. The final mixing and mastering of the sound was completed in 2007. The complaint alleges that Cole has no rights in the songs, which are owned by Peterson’s estate and Jayarvee.
The four songs are the standards “Our Love Is Here to Stay,” “My Romance,” “More Than You Know” and “Bewithched, Bothered and Bewildered.” All of the songs remain unpublished and have never been released with the permission of the copyright owners, the complaint alleges.
Kole Performed as Vocalist on Peterson Recordings
The complaint alleges that Kole has possession of the recordings and has distributed them and allowed them to be publicly performed without the permission of the estate. She purportedly gave a copy of the record as to at least one radio station that played the songs. Peterson’ss estate alleges that Kole has not responded to e-mails objecting to her use of the songs.
Staring down the barrel of a potentiallfy huge “worst case” judgment, publisher Macmillan agreed to a settlement with the U.S. Justice Department in the ongoing dispute with publishers of e-books. At this point, only Apple has not reached a settlement with the government.
E-Book Publisher Reports it Had No Choice But Settlment with Department of Justice
New York-based Macmillan, the publisher of e-books under various affiliated publishers, settled because it could not afford to lose.
As reported in the New York Business Jourrnal, John Sargent, Macmillan chief executive explained in a letter that “In this action the government accused five publishers and Apple of conspiring to raise prices. As each publisher settled, the remaining defendants became responsible not only for their own treble damages, but also possibly for the treble damages of the settling publishers (minus what they settled for). A few weeks ago I got an estimate of the maximum possible damage figure. I cannot share the breathtaking amount with you, but it was much more than the entire equity of our company.”
Digital Publisher Settle with Justice Department
The Justice Department reported the settlement on Friday with Verlagsgruppe Georg von Holtzbrinck GmbH, Macmillan’s parent corporation, but is purusing its claim against Apple, which purportedly conspired with book publishers to raise prices charged consumers for e-books.
The settlement will require Macmillan to remove existing restrictions on discounting and promotions by e-book retailers, as well as prohibiting similar arrangments until 2014. The settlement must be aproved by the federal District Court in New York. Similar agreements with other settling publishers have already been approved.
Macmillan’s line of putlishers include St. Martin’s Press and Farrar, Straus and Girous.
Aset Freeze is Limited to Accounting for Profits; No Seizure Permitted for Statutory Damages Award
The assets that may be frozen to fund an equitable accounting in a trademark counterfeiting case are limited to those necessary to disgorge profits, according to a recent decision in the Southern District of New York. Thus, while the plaintiff may ultimately be entitled to a statutory damages award, no pre-judgment remedy will be available to assure payment at the end of the case.
In that case, Klipsch Group, Inc. v. Big Box Store Ltd., the court had initially granted temporary relief restraining the assets of some 20 defendants
including the Hong Kong company DealDxtreme.com. The result of the Court’s order was that approximately $2 million were seized from one of DealExtreme’s PayPal accounts. When DealExtreme – an auction site like e-Bay — demonstrated evidence that less than $10,000 of the alleged counterfeit goods had been sold through its site, the restrained funds were dropped to no more than $20,000.
Lanham Act Permits Asset Freeze
The case involved Klipsch-branded headsets, which the plaintiff’s investigators had purchased through a number of on-line retailers between December 2011 and June 2012. The plaintiff sued 20 retailers and obtained an ex-parte order training the assets of the defendants.
AdWords Trademark Infringement Claimed
Google AdWords advertisements that use a competitor’s trademarked name as keywords are not necessarily an infringement of the mark – much to the consternation of the companies that own established trademarks. Rather a Court most likely will apply a traditional likelihood of confusion analysis in judging whether this type of advertising is trademark infringement.
A federal judge sitting in the Eastern District of Pennsylvania recently held that AcademyOne, Inc. had not infringed the trademarks of its larger, more established competitor when it bought Google AdWords on the works “collegesource” and “career guidance foundation.” CollegeSource, Inc. v. AcademyOne, Inc., Civil Action No.: 10-3542 (E.D.Pa. Oct. 25, 2012).
Keywords in Internet Advertising
Internet advertising using the name of a better known competitor as a keyword is not uncommon. The technique permits the smaller company to have its Internet advertisements appear directly alongside the larger competitor as an alternative source. Of course the owners of established marks would like to prevent it entirely and can be aggressive in pursuing trademark infringement claims that seek to prevent the practice. The claims can be difficult to make, however, as the Collegesource case demonstrates.
Lanham Act Reverse Passing Off Claims Fail in Stormwater Contract Case
A construction contract that allows substitution of a product by a lesser-know “equal” is a poor basis for infringement and unfair competition claims under the federal Lanham Act or Florida state law, according to the Eleventh Circuit Court of Appeals.
Suntree Technologies, Inc. v. Ecosense International, Inc., No 11-13916 (11th Cir. Sept. 5, 2012) is good example of the manner in which some parties will try to use trademark law, such as a reverse passing off claim, to stifle competition – as opposed to protecting its mark as an identified. The effort fell flat in this case, although clearly not until significant resources were invested in a lawsuit of questionable merits.
Trademark Infringement Claimed In Contract Bid
Plaintiff Suntree is the manufacturer of baffles, stormwater treatment structures that separate debris and various types of pollutants from stormwater as they pass through. The baffles are vaults of sorts, with various levels and controls. The City of Rockledge, Floridaspecified the baffles of Suntree, the best-know manufacturer of its industry, or “approved equal” in a construction contract.
Suntree baffles were specified as components of a public stormwater contract — mentioned by name in the bid specifications and the defendants’ bid – but subject to the potential to replace an “equal” at lesser cost.
Reverse Passing Off Claim Rejected
The winner of the bid substituted baffles made by the defendant Ecosense, with the approval of the city. Suntree sued, but its claims did not withstand summary judgment and the 11th Circuit affirmed, finding no evidence either of actual confusion or a likelihood of confusion.
Suntree claimed that the contractor had used its mark in the submission of its bid and that it had engaged in unfair competition because it submitted the bid with the plan of substituting another manufacturer’s product after winning the contract. The court rejected this theory, since there was no evidence that anyone was fooled – of likely to be fooled – about the source of the baffles.
The court also rejected claims that defendant tried to pass off Suntree’s products as its own, known as reverse passing off. Here again, the court found that there was intent to confuse potential customers and that the city’s engineers were not fooled. Similarly, the use of photos of Suntree’s baffles was not actionable as false advertising when they were immediately removed after complaints from Suntree.
Trademark law protects words, symbols and other identifiers of source. It is not a bar on competition and there are often circumstances in which others – even competitors – can legitimately use a mark without its owners consent. The issue will always turn on whether the use was confusing, misleading or an unfair attempt to profit from another’s goodwill.