|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update THE SWEET SOUNDS OF LAUREL AND HARDY Dolman v. Agee et al. (Ninth Cir. - October 5, 1998) WHEN FINAL’S FINAL Rocket Jewelry Box, Inc. v. Noble Gift Packaging, Inc. (Second Circuit - October 9, 1998) A WORD OF WARNING Darby & Darby, P.C. v. VSI International, Inc. et al. (New York State Sup. Ct. - August 29, 1998) IS IT ENGLISH BREAKFAST OR EARL GREY? Trademark Electronic Application System (U.S. Patent and Trademark Office) THE SWEET SOUNDS OF LAUREL AND HARDY Dolman v. Agee et al. (Ninth Cir. - October 5, 1998) I doubt there is an American alive who hasn't had Laurel and Hardy movies indelibly impressed on their mind through their repeated replay on television. If you think hard, you may even remember the music that accompanied these early precursors of Dumb and Dumber. That music was written by Leroy Shield. This suit is for infringement of Mr. Shield's copyrights in his compositions. The District Court found infringement of all the songs in issue and entered judgment in favor of the Plaintiff including an injunction and an award of attorneys' fees. Defendants appealed. The history of the copyrights starts with their creation in the late 1920s and early 1930s. Shield composed the musical portion of the soundtracks for the Laurel and Hardy movies produced by Hal Roach and released by MGM. Hal Roach Studios contracted with Victor Talking Machine to create soundtracks. MGM registered the copyrights for all of these movies. In January 1932, Shield assigned his interest in the subject songs to Southern Music Publishing Company, the publishing arm of Victor. Southern then registered the original term copyrights for the songs naming itself as copyright owner and Shield as the composer. There were a series of transfers which we need not go into, but by 1958 Southern again had possession of the copyrights and renewed the song copyrights in Shield's name. Turning to the present infringement, the Defendants received permission from Hal Roach and Hal Roach Studios to manufacture and distribute "Music Box" phonorecords containing renditions of the songs at issue in this case. Defendant had its own copyright attorney investigate the copyright status and reported back to the Defendant that the copyright situation was "a mess." Nevertheless, Defendants went forward with the release. In 1990, Plaintiff learned of the Music Box albums and twice informed Defendants of his rights. The Defendants did not respond. Here, the Ninth Circuit confirmed the finding of infringement of 55 song copyrights. Defendant failed in its burden of proof on a number of issues as discussed below, due to a lack of evidence surrounding events occurring in the 1930s. Given the absence of any proof as to the pertinent events, the decision was based on various presumptions under the copyright law. Defendants first argued that the work was a work for hire and, thus, would be owned by Hal Roach Studios. The Ninth Circuit noted that, at a minimum, Defendants were required to present some credible evidence that Shield's work was done at the instance and expense of either Hal Roach or Victor in order for the work-for-hire presumptions to come into play. The only evidence that Defendants could offer was the fact that at the time he authored the songs, Shield was working for Victor on Hal Roach Studios produced movies. While it is undisputed that Shield was an employee of Victor at the time the movies were produced and the songs in question were written, this is not enough to carry the day. The only evidence as to the nature of his employment were invoices that indicated Shield was paid for services without indicating what those services were. On the Music Box albums, Defendant acknowledged that Shield was a consultant supplied by Victor to Hal Roach Studios. Shield's actual position at Victor, as of 1926, was Head of Artists and Repertoire for the Western United States and as of 1932, Western Musical Director for RCA Victor's National Broadcasting Company. Thus, there was an absence of evidence that composing music for Hal Roach Studios was within the scope of Shield's employment with Victor, nor evidence the songs were written at the instance and expense of Hal Roach Studios. Shield's assignments to Southern, which were owned by Victor, and their renewal in Shield's name are indications that the parties assumed that the works were not works for hire. Next, the Defendants argued that the music was published when the movies went into circulation and entered the public domain several years before the music copyrights in question were filed. The Ninth Circuit disagreed. It is long established that performances, including movie performances, are not publications of the underlying music. They are simply not tangible copies. In the context of a forfeiture of copyright, publication of a motion picture does not occur until the film is in commercial distribution - - when copies of the film are placed in regional exchanges for distribution to theater operators. While it appears likely that such had occurred, Defendants introduced no evidence that supports that the movies were "published" more than 60 years ago. WHEN FINAL’S FINAL Rocket Jewelry Box, Inc. v. Noble Gift Packaging, Inc. (Second Circuit - October 9, 1998) Defendant was the licensor of Plaintiff's patented jewelry boxes. The license provided for quarterly payments and included an arbitration provision. Defendant stopped paying and Plaintiff terminated the agreement and demanded arbitration seeking recovery of royalties due. The parties stipulated six issues relating to the license agreement to be arbitrated. The parties explicitly excluded the issue of the validity of Plaintiff's design patent and the effect of invalidity on the party's rights and obligations under the license agreement. The arbitration panel found for the Plaintiff who then petitioned the District Court to confirm the award. The Defendant cross-petitioned to have the award vacated because it believed that the award was not final as required by 9 U.S.C. § 10(a)(4). Defendant's argument was that since the patent issue was not decided, the arbitration could not finally settle the matter and, thus, it was not a final decision. The District Court's approach was to look at the question of patentability and make a determination that the defense was not valid. The Court of Appeals indicated that the District Court did not have to consider matters relating to validity of the design patent and vacated so much of the District Court's opinion that dealt with patent validity. It went on, however, to say that finality that was necessary for an arbitration decision was a finality only with regard to the matters arbitrated. Thus, if all the matters were arbitrated and a decision was reached with regard to them, the decision was final even though there may have been other issues between the parties which were not the subject matter of the arbitration. Here, the question of validity was not part of the arbitration and, thus, the arbitration decision on all of the issues actually arbitrated was final. The decision can be reviewed at: http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3/97-9573.opn.html A WORD OF WARNING Darby & Darby, P.C. v. VSI International, Inc. et al. (New York State Sup. Ct. - August 29, 1998) Intellectual property law, at least in the United States, has traditionally been practiced by specialized law firms dealing only in intellectual property. As a result, a rather parochial and limited view of the IP attorney's responsibility has developed. In this case, one of the better known intellectual property firms failed to take a wider view of its responsibilities and thus subjected itself to a suit for malpractice. Plaintiff represented the Defendants in a trademark, patent and copyright action starting in 1990. Up until the end of 1992, the Defendants had paid a substantial portion of their legal bills. Defendant stopped paying the bills by the end of 1992. By the end of 1993, the Defendant owed approximately $200,000 in legal fees. Defendants obtained new counsel who informed them that they may be covered by their insurance. They were. However, coverage was limited to attorneys' fees which occurred after notification to the insurance company and, accordingly, the hundreds of thousands of dollars of fees already paid or incurred were not recoverable from the insurance company. Plaintiff sued for the outstanding unpaid bills and Defendants sued for malpractice in the Supreme Court of the State of New York which is the lowest court of general jurisdiction in New York. In deciding summary judgment motions, this Court made a number of findings under New York law which are highly relevant to malpractice suits against intellectual property attorneys. To intellectual property attorneys, the case may read like a Stephen King novel. The law firm maintained that its responsibility only extended to the actual litigation and, as an intellectual property firm, was not competent to advise Defendants about matters which related to the financing of the litigation. Defendants argued, and the Court agreed, that "an attorney who is retained to represent a client in litigation is not merely a technician whose responsibility, as Plaintiff suggests, are limited to legal strategy." The Court found that Plaintiff's conduct may be legal malpractice and, thus, the issue should be resolved at trial. In addition, the Court left the contested issue as to whether the firm failed to inform the Defendants of the legal implications of its continued manufacture after receiving a warning letter, or the cost it would be exposing itself to do so, be determined at trial. Because of statute of limitation problems, the amount which could be recovered would be limited to the amount of damages sought in Plaintiff's complaint. The decision may be viewed at: http://www.lcp.com/products/NY/slipops/pay/misc/F9851580.htm IS IT ENGLISH BREAKFAST OR EARL GREY? Trademark Electronic Application System (U.S. Patent and Trademark Office) The PTO's electronic filing program moves a pace. Its most current version may actually be useful. In actuality, there are two electronic programs. First, PrinTEAS allows a person to call up a web page which has a form into which the applicant puts the requested information and creates a drawing page. The drawing page may have a "gif" or "jpg" format image attached for design marks. The resulting form is printed and submitted in the normal fashion. The form was last updated in early October and is now vastly improved. There is also e-TEAS which allows electronic filing. You create the application on line, as with PrinTEAS, and, in addition, add your specimen through a "gif" or "jpg" format file. Signature on the application is accomplished by use of a code and a confirming writing by the applicant designating the code which is maintained in the applicant's attorney's files. This is the weakest aspect of the system and would most likely make direct electronic filing, at least at this point, more trouble than its worth. For a complete explanation of both systems and in particular the signature requirements in the eTEAS program, one should go to the following address: http://www.uspto.gov/teas/e-TEAS/index.html |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|