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Oscar Peterson’s Last Songs Subject of Copyright Claim

Jay McDaniel — Thu, 14 Feb 2013 10:23:53 +0000

Oscar Peterson’s widow has filed a lawsuit against singer Hilary Kole for copyrright infringement by sharing unpublished recordings on which she performed as a vocalist The case was filed in United States District Court for the Southern District of New York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 All of the songs remain unpublished and have never been released with the permission of the copyright owners, the complaint alleges.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.

E-Book Settlement by Macmillan Publishing

Jay McDaniel — Mon, 11 Feb 2013 13:06:00 +0000

e-books EPUB (Photo credit: ceslava.com)

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 Justice Department filed the suit in April 2012. To date it has settled claims against Hachette Book Group, HaperCollins Publishers, Penguin Group (USA) and Simon & Schuster.

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.

See Macmillan settles federal e-book lawsuit – New York Business Journal

Trademark Counterfeiting Case Justifies Asset Freeze

Jay McDaniel — Tue, 06 Nov 2012 18:49:11 +0000

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.

At the preliminary injunction, DealExtreme demonstrated to the Court’s satisfaction that it had sold far less than the $2 million that had been restrained in its PayPal account.

Lanham Act Statutory Damage Award Not Protected

The plaintiff in the action argued that the Court had authority, however, to restrain assets in an amount sufficient to satisfy a statutory damages award (as much as $2 million in a counterfeiting case.) The trial court, however, rejected that argument, holding that it was contrary to the U.S. Supreme Court’s holding in Grupo Mexicano de Desarrolo, S.A. V. Alliance Bond Fund, Inc., 527. U.S. 308 (1999), which prohibits the freezing of assets solely to satisfy a future judgment.

The trial court held that the plaintiff in a counterfeiting case is entitled to an asset freeze to preserve its right to an equitable accounting. The amount of the assets that may be frozen, however, should not be more than the profits that were likely derived from the sale of the counterfeit goods. Thus, the amount of the DealExtreme’s assets that could be frozen were limited by the likely profits that they had derived.

The trial court rejected the arguments of the plaintiff that all of the remedies provided under the Lanham Act are equitable in nature, and thus that the Grupo Mexicano decision did not limit its authority to restrain sufficient funds to satisfy a statutory damages award.

No Trademark Infringement in AdWords Campaign

Jay McDaniel — Thu, 01 Nov 2012 21:51:54 +0000

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.

We begin briefly with an explanation of Internet advertising based on keywords. Advertisers can buy advertisements based on keywords. Most of the time, the advertisers make a bid for the keyword. These ads are usually pay per click (PPC) – the advertiser pays the “click” price when the ad is clicked – or pay per impression (PPI) – in which the advertiser pays a set rate per 1,000 impressions. Keywords are based on their effectiveness and ability to generate sales.

Trademark Protection in PPC Campaigns

Just as an example, “trademark infringement attorney” has a relatively high estimated cost per click of $10.57 on Google AdWords. (That’s the estimated price to be first on a page of search results. There are a whole host of other factors involved in pricing and placement which is beyond this article.) So if I want to be at the top of the first page of search results as a sponsored ad when someone searches “trademark infringement attorney,” I just have to set my bid high enough and all things being equal I should be appear prominently on the page.

Now let’s suppose that I want to buy an ad that appears when someone searches for my competitor’s name. Let’s say that I am selling a low-sugar alternative to carbonated soft drinks. I buy advertisements based on the keywords “Coke” and “Pepsi” and run an ad that says “Better that Soda.” That might well be a legitimate use of the competitors’ marks as keywords.

There may be any number of reasons why an advertiser wants to use a competitor’s mark. Some of the uses are legitimate, others are not. For example, it’s generally appropriate to use the name mark of a competitor for the purpose of comparative advertising. On the other hand, bait and switch techniques are likely to constitute trademark infringement.

In the Collegesource litigation, the smaller competitor AcademyOne bought advertisements using the keywords “college source” and “career guidance foundation”

Protection for Trademark Owners in PPC Campaigns

CollegeSource alleged that it owned the marks and that the use without their permission was infringement. CollegeSource and AcademyOne are competitors in college information services such as in providing access to course catalogs and transfer information. The two companies have been in litigation now for several years in the federal courts in both Pennsylvania and California.

To establish trademark infringement, the Collegesource court held, the plaintiff must show that it owns the contested mark, that the mark is valid and legally and protectable and that the alleged infringing use is likely to create confusion about the source of the product or service.

Analysis of Trademark Infringement Claims

Courts considering a claim of likelihood of confusion use a series of factors. In the Third Circuit, the factors are taken from the decision of Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) and are known, not surprisingly as the Lapp Factors:

(1) the degree of similarity between the owner’s mark and the alleged infringing mark; (2) the strength of the owner’s mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.

In an Internet advertising case, four of those factors are most important, the court held, relying on a decision from the Ninth Circuit Court of Appeals, Network Automation, Inc. v. Advanced Systems, Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). These are the strength of the mark, evidence of actual confusion, the labeling and appearance of the advertisements and the degree of care likely to be used by the typical purchaser.

The court found that the marks were strong, but that there was little showing of actual confusion or that the advertisements themselves were likely to mislead the user. AcademyOne used the marks as triggers, but the text did not appear in the ads themselves.

The Court went on to find that there was insufficient evidence to support the allegation that AcademyOne was trying to capitalize on the plaintiff’s goodwill. Rather the Court indicated that the use of the mark may properly have been intended to “inform” consumers about alternative sources.

The net result of the Court’s analysis was that the fact that a trademark is used as a “trigger” is probably not sufficient to make out a claim of trademark infringement. Thus, where a mark is sufficiently well known and used directly as a search term it may not be easy to prevent competitors from trying to capitalize on that search engine traffic.

Collegesource and other similar decisions indicate that the courts will look for something more in a case involving Internet advertising like AdWords that mere use of the mark. Evidence showing that consumers were actually confused or that the mark was used unfairly – as opposed to without permission – will invariably strengthen the plaintiff’s case.

As always we welcome your questions and comments.

No Passing Off in Substituted Product

Jay McDaniel — Fri, 26 Oct 2012 13:53:26 +0000

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 (11^th 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 11^th 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.