|
|
|
|
|
|
||||
|
|
|
|
|
|
» 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 MARTIN LUTHER KING, JR. ESTATE STILL HAS A DREAM Estate of Martin Luther King, Jr., Inc. v. CBS, Inc. ANDY WARHOL'S ESTATE IS COLORABLE Schlaifer Nance & AMP Co. Inc., et al. v. The Estate of Andy Warhol, THOSE DECEPTIVE NON-NEW YORKERS In re Hiromichi Wada (Fed. Cir. - October 20, 1999) SEIZURE OF GRAY MARKET GOODS Martin's Herend Imports, Inc., et al. v. Diamond & Gem Trading United THE MARTIN LUTHER KING, JR. ESTATE STILL HAS A DREAM Estate of Martin Luther King, Jr., Inc. v. CBS, Inc. In the August 17, 1998 issue (Vol. II, Issue 32), we reported on the District Court's finding that Martin Luther King's "I Have A Dream" speech was in the public domain, since, by giving the speech, Dr. King had made a general publication of the speech under the 1909 Copyright Act and, therefore, placed it in the public domain. The Eleventh Circuit has now reversed that decision. The Eleventh Circuit noted that the speech was given to approximately 200,000 people gathered at the Washington Mall and was televised nationwide to millions of viewers. Approximately one month after delivery of the speech, Dr. King filed for copyright protection and the copyright issued soon thereafter. Immediately thereafter, Dr. King filed a suit in the Southern District of New York to enjoin unauthorized sale of recordings of the speech and won a Preliminary Injunction on December 13, 1963. For the next twenty years, Dr. King and his estate enjoyed copyright protection in the speech and licensed it for a variety of uses. In 1994, CBS entered into a contract with Arts & Entertainment Network to produce a historical documentary series entitled "The Twentieth Century With Mike Wallace." One segment was devoted to Martin Luther King, Jr. and the march on Washington. That episode contained material filmed by CBS during the march and excerpts of footage of the speech amounting to about 60% of its total. CBS did not seek the estate's permission to use the speech in the matter and refused to pay royalties to the estate. This litigation ensued. The legal analysis is under the 1909 Act under which a state common law protection persisted until the moment of general publication where the author forfeited his work to the public unless he had previously complied with the federal statutory requirements converting the common law copyright into a federal statutory copyright. The Courts developed a distinction under the 1909 Act between general publication and limited publication to soften the effect of this draconian rule. The general publication occurred only when a work was made available to members of the public at large without regard to its identity or what they intended to do with the work. Conversely, a non-divesting limited publication, is one which was communicated to a select group for a limited purpose and without the right of defusion, reproduction, distribution or sale. The opinion noted that a general publication occurs either if a tangible copy of the work had been distributed to the general public in such a manner to allow the public to exercise domain and control over the work, or if the work is exhibited or displayed in such a manner as to permit unrestricted copying by the general public. The speech would appear to fall under the latter, the case law clearly indicates that distribution to the news media, as opposed to the general public, for the purpose of enabling the reporting of a contemporary newsworthy event, is only a limited publication. Thus, the judge writing the majority opinion was unable to conclude that CBS had demonstrated beyond any general issue of material fact that Dr. King simply, through his oral delivery of the speech, engaged in general publication making the speech available to members of the public at large without regard to their identity or whatever they intended to do with the work. Interestingly enough, this decision was a three-way split. The second judge on the panel concurred in part. This judge simply found no general publication since a performance could never be a publication. The third judge took the position that the District Court was, in fact, correct in its finding of general publication. The decision can be reviewed at: http://caselaw.findlaw.con/cgi-bin/getcase.pl?court=11th&navby=case&no=9890790PN ANDY WARHOL'S ESTATE IS COLORABLE Schlaifer Nance & AMP Co. Inc., et al. v. The Estate of Andy Warhol, The underlying case here, like Andy Warhol's life, is complex and disorganized. This case is the tale end of multiple litigations arising out of a license of Andy Warhol's works to the Plaintiffs. During negotiations for the license, Andy Warhol died, and the estate completed the agreement. The license broadly granted the Plaintiffs many rights to license Warhol's artworks, name and likeness, for the fashion, home decorating, gift, toy and entertainment industries. As matters developed, he had far less than all such rights granted. The Plaintiffs first obtained an award in arbitration of millions of dollars based on the agreement. Thereafter, they sued for fraud in the inducement and RICO. After a trial on the merits on the fraud count and a substantial jury award to Plaintiffs, the District Court found for the Defendants not withstanding the verdict, since the District Court believed there could be no reliance on the misstatements made, since they were contradicted by the terms of the agreement itself or made after the agreement was entered into. This decision was upheld by the Second Circuit in an earlier ruling. After the mandate issued from the Second Circuit ending the case, the Defendants moved for sanctions and the Judge sanctioned both the Plaintiffs and its attorneys, since the court felt that the fraud claims were not colorable. This is an appeal from that award. The Second Circuit found that the District Court did have jurisdiction to impose sanctions irrespective of the status of the underlying case because the imposition of sanctions is an issue collateral to and independent from the underlying case and found that there were sufficient procedural safeguards, even though the Plaintiffs was not given an opportunity for an evidentiary hearing on the issue of whether its claims were colorable. While the Second Circuit had already affirmed that the fraud counts were not supportable since the Plaintiffs had means of knowing that the representations were unreliable or false, this did not mean that the claims, by their nature, were not colorable. The Court found that the information merely indicated concerns and potential problems. There existence did not render Plaintiffs' reliance on the estate's representation, so utterly unreasonable that the Plaintiffs' claims were totally devoid of a colorable basis. In fact, the jury verdict itself speaks against the District Court's finding of the absence of colorability. The decision can be reviewed at: http://law.touro.edu/2ndCircuit/October99/98-7931.html THOSE DECEPTIVE NON-NEW YORKERS In re Hiromichi Wada (Fed. Cir. - October 20, 1999) This is an appeal to the Federal Circuit from a decision of the Trademark Trial and Appeal Board affirming a final rejection of an intent to use application for the mark NEW YORK WAYS GALLERY. The application for NEW YORK WAYS GALLERY was based on intent to use for various kinds of leather bags, luggage, backpacks, wallets, tote bags, and the like. The applicant disclaimed any use of "New York" apart from its use with the composite mark. There was no connection between the identified goods of a Japanese citizen and Michigan resident with the term "New York." The examining attorney found that the primary significance of the term "New York" was geographical, that the handbags and luggage are designed and manufactured in New York, that the public would associate and identify the goods with New York. In other words, there is a good place association between New York and the identified goods. The applicant's argument that NEW YORK WAYS merely described a New York style, was not found persuasive to the Board and the Federal Circuit did not find such to be arbitrary, conspicuous, an abuse of discretion or unsupported by substantial evidence and, therefore, upheld this finding. That "New York" was disclaimed had no affect on the refusal. While prior to the NAFTA amendments to the Lanham Act, such a disclaimer would have allowed registration, upon a showing of secondary meaning, if the mark were merely geographically deceptively misdescriptive (but not deceptive, i.e., purchasers would have purchased the goods based on the false goods place association). However, with the incorporation of the NAFTA amendments, primarily geographically deceptively misdescriptive marks were precluded from registration under all circumstances even with a showing of secondary meaning. While neither the statute nor the legislative history addressed the practice of disclaiming primarily geographically deceptively misdescriptive terms, the PTO issued an Official Gazette notice indicating such disclaimers would no longer work in this situation and so indicated in its amendments of the TMEP Sec. 210.06. Since the Commissioner is given broad flexibility in implementing disclaimer policies, the Commissioner had the ability to adopt such a policy in the present circumstances particularly since it is consistent with the NAFTA amendments. The decision can be reviewed at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/99-1160.html SEIZURE OF GRAY MARKET GOODS Martin's Herend Imports, Inc., et al. v. Diamond & Gem Trading United This dispute involves the import and sale of high-end porcelain products manufactured by Plaintiffs with the federally registered trademark HEREND. The co-Plaintiff Martin's has the exclusive right to import Herend products into the United States. Defendants sold pieces from American and foreign sources, including Herend stores in Hungary, and sold them in the United States, including genuine HEREND pieces that Martin's did not sell in the United States. Plaintiffs sued for trademark infringement and obtained an ex parte restraining order and a seizure order, based, in part, on affidavits that Defendants had sold counterfeit HEREND porcelain goods. Defendants counterclaimed alleging wrongful seizure. The judge granted summary judgment denying the Defendants' counterclaims. The jury then returned a verdict in favor of Martin's for $685,000 on the trademark infringement claims, the Court entered final judgment and a permanent injunction against the Defendants and later entered a contempt order for violating the terms of the injunction. On the first appeal, the judgment and damage award was affirmed, but the injunction was found to be too broad and remanded with instructions to amend. The Fifth Circuit also reversed the summary judgment on the wrongful seizure counterclaim. On remand the Defendants requested retrial for wrongful seizure claims and the over-broad injunction and attempted to introduce new evidence which the Court denied. Defendants then moved for leave to file an amended counterclaim to seek declaratory relief with respect to the scope of the injunction. The Court denied the motion, then entered the amended permanent injunction. The wrongful seizure case, after much maneuvering went to the jury which found in favor of the Plaintiffs. The Court entered final judgment incorporating the verdict and the Defendants appealed. Thus, the second appeal before the Fifth Circuit rests on the denial of the motion for leave to modify the permanent injunction. By this maneuver, the Defendants wished to make clear that they were free to resell any HEREND porcelain that was already circulating in the United States. This proposed amendment and the question of the injunction language both go to a fundamental question. The Fifth Circuit, in its original decision, found the injunction should be modified to allow Defendants to be allowed "to sell any HEREND pieces offered in a Martin's catalog" or "to be free to sell any individual pieces of the same quality from the same product line if Martin's ever approved a piece for importation and sale in this country." Defendants, however, are trying to require that "all HEREND porcelain found in the United States is presumed to be approved." This was not originally ordered by the Fifth Circuit or implied in its Order. The Fifth Circuit found Defendants were merely trying to argue the same theory that failed in the earlier trademark infringement dispute. With regard to the counterclaim, the District Court applied the correct standard, i.e., that for the seizure to have been in bad faith, Plaintiffs must have known it was baseless. The good faith belief, even if it turns out to be untrue is sufficient. The Court also found that it was the Defendants who had the proof of showing all elements of the counterclaim. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=5th&navby=case&no=9820519CVO |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|