Copyright Infringement Small Claims Court Services

The Copyright Small Claims Court will be commencing operations in a few weeks (late June, 2022), and Oliver & Grimsley is pleased to announce that we will be providing both plaintiff and defense services for copyright small claims actions.

Copyright small claims actions should be a cost effective way of enforcing copyrights in the United States, if the copyright holder is primarily seeking a determination of infringement, and willing to receive an award of no more than $30,000. There are some considerations to keep in mind, however.

One advantage is that Copyright small claims actions can be filed without having previously received a certificate of registration, and without filing an application for special expedited status (which is expensive). However, an application for a certificate of registration must have at least been filed at the time of filing a small claims action.

The ability to file small claims efficiently should also provide a slightly better basis for pre-litigation resolution, as prior to this, it has always been a bit of a poker game to figure out whether an actual full suit would be filed in Federal court. Federal cases are very expensive, and if the copyright was not timely registered (see note 1), no statutory remedies or attorneys fees are available. With the ability to file claims informally, for much less cost, and without significant risk of years of discovery, a defendant receiving a cease and desist letter will have to more carefully consider whether a small claims action might be filed. However, the defendant receiving a small claims complaint can treat that claim as a true case or controversy, opt out of the proceeding, and commence a declaratory judgment action in some remote location, so this risk is not mitigated with the small claims process.

The biggest problem with the small claims process is that the small claims court is not mandatory – it is elective. If a defendant has such a claim filed against it, it can “opt out” of the proceeding, in which case “If you opt out, the CCB will dismiss the claim against you, but the claimant can still bring the same claim in federal court.” See https://ccb.gov/respondent/. Therefore, a plaintiff could go to the trouble of filing the small claim, spending money and filing fees, only to have the defendant opt out, and then the plaintiff has to start all over again in Federal court. It is virtually never cost effective to file a Federal court claim in the $30,000 range, so it will be easy for defendants who determine their risk is only at or around that number, to opt out and thus bet that the plaintiff will not follow through.

On the other hand, if a defendant believes that the claim is higher than $30,000, and there is real risk of plaintiff winning and also collecting fees (see note 1) – then opting in might make sense for the defendant.

In short, there is no one answer whether a plaintiff should file in small claims, and no one right answer whether a defendant should opt out. However, as the process is currently set up, it is generally going to be more likely that a defendant elects to opt out, especially where the plaintiff failed to timely register their copyright, and cannot seek statutory damages and the collection of attorney fees.

Note 1: Under 17 U.S.C. § 412, statutory remedies and attorneys fees are not available to a plaintiff/copyright holder unless the effective date of registration is either within 3 months of first publication of the work, “or 1 month after the copyright owner has learned of the infringement,” https://www.copyright.gov/title17/92chap4.html#412

This Spring, Stop and Smell the Roses: Bloomery Plantation Releases New Sweetshine®

Chilly weather has been plaguing us for longer than usual this spring, but we’re seeing a seasonal shift!  The folks of Bloomery Plantation Distillery have coaxed in the warmer weather with a newly launched product that joins the trademark-branded Sweetshine ® ranks of its internationally acclaimed flavored spirits!

Making its official debut, Saffron Rose Sweetshine ® tastes of rose, orange, and hints of saffron, and exhibits the champion-style quality of its family spirits, having been honored with the Silver Medal in the 2018 San Francisco World Spirits Competition.  In addition, the creative artwork of the lovely lady, Miss Rose, adorning the Sweetshine ® label, is indicative of the signature trade dress featured on all Sweetshine ® products and is complimentary to the portfolio of award-winning label illustrations.  

Together with having a quality product, Bloomery Plantation’s successful brand foundation is based on its intellectual property, which is built upon its registered trademarks, and distinguishable trade dress creating an iconic look and feel of its products.  Through these efforts, Bloomery Plantation has set its business and products apart from other distilleries and products in the industry.

A protectable trademark and brand are essential components of a prosperous business foundation, directly impacting business viability and valuation.  Bloomery Plantation has taken its business to a new level by using its intellectual property, registered trademarks and creative trade dress, to visually distinguish its product, increase brand recognition among consumers, and increase product visibility and placement on retail store shelves.  Together with a number of factors, including hard work and a quality product, Bloomery Plantation’s new trademark and branding campaign has increased valuation for the Bloomery Sweetshine ® business, along with also playing a part in the business’ increased sales revenue.  Our law firm was instrumental in helping Bloomery Plantation secure its intellectual property in its new branding efforts.  We advise clients during the product naming process, perform trademark investigative clearance searches, draft and file trademark and copyright applications with governments, both U.S. and abroad, and handle applications throughout the entire government examination process.  In addition, our firm also assists with maintaining protection and enforcing intellectual property against unauthorized third-party users.

We wish our client, Bloomery Plantation, the very best on its new product release!  See more about Bloomery Plantation and its award-winning and creatively flavored liqueurs, here.

For more information on creating, securing, and protecting your Product, Trademark, and Brand, please contact Pamela K. Riewerts, Esq., Partner and Intellectual Property Attorney at Oliver & Grimsley, LLC.  Pamela may be reached via email at: pamela@olivergrimsley.com

 

Congratulations to Our Client: “Mario Armstrong’s Never Settle Show” Wins Emmy Award

Hard Work and Hustle Pay Off:  Congratulations to our client, Mario Armstrong’s Never Settle Show for taking home an Emmy Award for “Interactivity” at New York’s 61st Annual Emmy Awards on April 14, 2018. The Emmy Awards Show celebrates talented television creators and media professionals in the industry. See Mario’s Emmy Award acceptance speech on behalf of the Show here.  In addition to the Show’s award win, Mario Armstrong was also nominated for an Emmy Award for his role as Program Host.

Recently celebrating its one-year anniversary, the Never Settle Show has been an industry game-changer in television broadcasting. By blending traditional TV production and innovative technology, the Show engages with a real-time audience from all over the world for participation in the Show by live video streaming and connecting with social platforms such as Twitter, Facebook, Snapchat, Periscope, Instagram, and YouTube Live.  The real-time audience communicates and interacts with guests through the Show’s social media.

In 2010, Mario Armstrong won an Emmy Award for Best TV Show Host and he was honored with another nomination in 2015 and again in 2018.  The Show recently finished its second season and is looking forward to announcing its third season.

Produced by Al Roker Entertainment and Never Settle Productions, the Never Settle Show airs each Wednesday at 7 P.M. ET/4 P.M. PT in New York City in front of a live studio audience. Viewers can watch and interact with the show through Entrepreneur Media’s Facebook page on: https://www.facebook.com/EntMagazine and The Never Settle Show, https://www.facebook.com/NeverSettleShow/.

The entire team at Oliver & Grimsley, LLC wishes Mario and the Never Settle team continued success – Congrats on all your hard work!  You did it!

 

 

Pharrell and Robin Thicke have “Got to Give it Up” to Marvin Gaye’s Family for Infringement due to “Blurred Lines” Song

Last week, the Ninth Circuit upheld the lower court ruling that the artists of the 2013 “Blurred Lines” best-selling single infringed the copyright of Marvin Gaye’s 1977 song “Got To Give It Up”.

In 2013, the family of the late Marvin Gaye sued musicians Pharrell Williams, Robin Thicke, and T.I.  (Clifford Harris, Jr.), and related recording companies, for copyright infringement. “Blurred Lines” was the best-selling single in the world that year and the Gaye family believed it to be similar in composition to Marvin Gaye’s 1977 song “Got To Give It Up”. In 2015, the trial jury agreed.  After three years of an appeal process brought by the musician defendants, the United States Court of Appeals for the Ninth Circuit upheld the infringement ruling (Williams, et al. v. Gaye, et al. Case No. 15-56880)(March 21, 2018).

The decision was not unanimous. Judge Nguyen wrote a dissenting opinion stating that the songs “differ in melody, harmony, and rhythm.”  She also noted that it can be “challenging for judges untrained in music to parse two pieces of sheet music for extrinsic similarity. But however difficult this exercise, we cannot simply defer to the conclusions of experts about the ultimate finding of substantial similarity. […] Judges must still decide whether, as a matter of law, these elements collectively support a finding of substantial similarity.”  This ruling ultimately changes the music industry landscape moving forward, as it is arguable that the decision improperly protects an artist’s form of musical style. The majority opinion written by Judge Milan D. Smith, Jr., however, focused mostly on the technicalities of the case and the grounds for appeal, determining that the trial court erred only in finding Interscope Records and T.I. liable.

The Gaye family is entitled to approximately a $5.3 million-dollar judgement and running royalties of 50% on future songwriter and publishing revenues.  The damages breakdown consisted of: $3,188,528 in actual damages, plus profits of $1,768,192 against Thicke and $357,631 against Williams (and companies collecting royalties on William’s behalf). TI and his associated recording company were cleared of any infringement.

***To investigate or consider copyright protection for music, lyrics, or other works of art, or for more information, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC.  Pamela may be reached via email at: pamela@olivergrimsley.com

Cake Decorators’ Dilemma – To Make Or Not To Make That Character Cake?

When you walk through a bakery and see a cake with Disney Frozen characters on it, do you ask yourself – did Disney allow that?   At birthday parties, you see many themed parties and theme cakes – parents want to have a character cake for their child’s birthday.  A baker/cake decorator may wonder what are the legal risks in making and selling such cakes?  They do not want to lose a sale, but they don’t want to find themselves in legal trouble either.  Some may wonder how will the owner of these characters even find out if I make a cake with a character on it or even care?

The copyright owners of the character artwork do care and, particularly with social media today (everyone at the party taking pictures of the cake and posting on Twitter, Facebook and Instagram etc), it is easier to find such unauthorized works.  This post explores basic legal issues in the cake decorating business.  (more…)

“Such a character!” – pitfalls in using and protecting novel characters

We all know that guy or lady – the one who does impressions, or makes up a character and has us laughing all nite.  Well, it was no laughing matter to Hank Azaria when he was threatened with infringement of a character he created that went viral.  Azaria v. Bierko, C.D. Ca CV 12-9732 GAF (2/21/2014).

Azaria is an actor and voice performer (among many other voices, he voices several characters on the Simpsons).   Since about 1986 Azaria kept his guests in stitches at parties with a fictional baseball announcer voice.  In 1990 he was introduced by a mutual actor friend (Matthew Perry) to Craig Bierko – another comedian, who also did a fictional baseball announcer voice and character.  They interacted with their characters and often “riffed” on their characters.  Azaria wanted to use the voicing of Bierko’s announcer but Bierko refused.

Fast forward to 2010 (about 10 years later) when Azaria publishes a video on Funny or Die (note: has mature content) with a Baseball announcer character “Jim Brockmire”, and it goes viral.  Azaria is considering expanding the “character” into more short stories or videos, but Bierko threatens Azaria for violation of his Baseball announcer voice and character – and Azaria sues for a declaratory judgment of non infringement/non violation of rights.

Bierko’s “character” was not well defined – and it was only twice fixed in a tangible medium – both times only in audio and in both cases, only the voice provided character definition.  Azaria’s character was only fixed in a tangible medium once – however, the video has other announcers who “define” the character traits by describing Jim Brockmire, and Azaria’s portrayal of the fictional Jim Brockmire in the short video gave the character additional identifiable traits (type of clothing, style of announcing, over the top movie references etc) – many more attributes than those of Bierko’s 1 dimensional voice character.  Ultimately the court ruled in Azaria’s favor.  The court also held Bierko’s character was not protectable.

There is no legal question that fictional characters can be copyrighted, and hence, achieve protection from infringement.  However, the character must be rather well developed – either textually or via audio or video means.

This case demonstrates a number of issues we see regularly in our media practice – a confluence of ideas (which are generally not protectable absent a contract), and multiple people building one thought or idea on top of another until something actually creative and protectable is born.  When that happens – what are the rights of the parties?  Who owns the character that is born?

Likewise, we often encounter the reverse issue – a creative person sees a short video or skit, or reads some story (whether about a real or made up person) and then their ideas start to form and they develop a story or character from that interaction with existing content.  If they write that story or make the video, will they infringe the person/content they referenced or built upon?  Was it fair use?  Was the content even protectable?

The court avoided the 1st Amendment issue – but there is a also a strong question here whether the video – which is a classic parody of baseball announcers in general, would be actionable.  Recall the numerous funny skits of Will Ferrell as Harry Caray – all protectable as fair use paraodies.

We enjoyed the Azaria case because it describes a rather typical scenario . . . where the creative thought process takes a long time to develop and sources from interactions with third parties (sometimes at parties) who at least provided a germ of an idea.  If the facts had been changed only slightly (say that Azaria had never done a baseball announcer until he met Bierko) would the result have been different?

Determining whether a creative character is infringed, or can be protected, and to what extent, can be complex.  If the media presentation is a classic parody you can fall back on the 1st Amendment in many cases – but if the character is going to be used in a more mainstream manner, it is important to consider both possible infringement issues, as well as protection issues.  In terms of protection issues, as the Azaria case demonstrates, it is important that the fixation of the character (e.g. in audio, audio-visual, or textual mediums) describe a multidimensional and complete character.

For media clearance and protection issues please feel free to contact Mike Oliver or Kim Grimsley at Oliver & Grimsley.