intellectual property news
August 19, 2015 – Federal district court judge Lucy D. Koh has set an August 2016 trial date in a copyright infringement action brought by firm client Andrew Paley, a GRAMMY and EMMY award-winning musician and composer, against the producers of a popular online animated children's television series called TUTITU. Exclusively aired via YouTube, with its own YouTube channel, over 1.5 million YouTube subscribers and reported views in excess of one billion, the series featured (until recently) theme music Paley says was based on his song "Breakfast at Stubbs," a version of which was itself featured in Paul Bartel's motion picture "Shelf Life," released in 1993. The firm has subpoenaed YouTube for financial and other data expected to reveal the inner workings of YouTube's compensation to content creators like TUTITU's producers. Judge Koh also set a November deadline for the parties to conduct a private mediation. A date for that event is pending.
August 7, 2015 – In a Memorandum Order issued today, Federal District Court Judge Aleta A. Trauger in Nashville sided with the firm’s client, Believe Digital (a digital music aggregator based in France), and its codefendant, SAAR (a music licensor based in Italy), granting dual motions to dismiss the copyright infringement complaint of plaintiff One Media IP (a U.K. entity) against them for lack of personal jurisdiction. Finding that One Media had “not demonstrated that Believe purposefully availed itself of the privilege of transacting business in Tennessee,” the court concluded that One Media “has not shown that it would be reasonable for the court to exercise personal jurisdiction over Believe.” In contrast to the firm’s briefing, the court characterized One Media’s submissions and factual contentions variously as “disingenuous,” “misleading,” “difficult to follow,” “vague,” "evasive" and “exaggerate[d]." The court pointed to “many instances” in which One Media “fudged the distinction” between entities formed in Tennessee and elsewhere to bolster its position that the case was rightfully before the Nashville court, and agreed with the firm’s suggestion that One Media “attempted. . .to manufacture an illusory present financial interest in this lawsuit" in a defunct Tennessee entity. Further proceedings in the action are pending.
June 30, 2015 -- The firm prevailed today in the case of Wonderbread 5 v. Gilles, a matter pending before the Trademark Trial and Appeal Board, concerning a dispute over the band name "Wonderbread 5" and the filing of a trademark registration for that name by a disgruntled former band member following his exit from the band. The band (a popular San Francisco-based party band) sought to cancel that registration on grounds of prior use and fraud on the Trademark Office. In its 26-page decision, the TTAB vindicated the band's position in the matter, finding unequivocally that the band partnership owned the name and that the former band member's trademark registration was invalid and must be cancelled.
June 17, 2015 – Partners Nick Carlin and David Given prevailed upon federal district court judge Lucy H. Koh today to return to state court model/actress Cyndra Busch’s case against grape grower Jakov Dulcich and Sons and its distributor for claims arising from the unauthorized use of her likeness in their “Pretty Lady” brand of grapes. Defendants contended that Ms. Busch’s claims belonged in federal court under the federal Copyright Act. Judge Koh easily dispatched those and other contentions in her 12-page decision, agreeing with the firm that removing the case from state court was untimely and therefore improper. The firm has since moved for an award of costs and fees for defendants’ improper removal of the action; Judge Koh will hear that motion in October. Meanwhile, the state court judge originally assigned the case in Marin County Superior Court has set a hearing in the action for next month.
Following breakthrough victory for songwriters, EMI Music Publishing agrees to settle "Daydream Believer" case
May 29, 2015 – In the wake of an early defeat, EMI Music Publishing has agreed to settle firm client Stephanie Ford Stewart’s case against it for unfair business practices in connection with its policy and practice on the payment of foreign royalties. The client, widow of John Stewart – former Kingston Trio member and composer of The Monkees’ hit song “Daydream Believer” – contended that EMI was unfairly paying its own wholly-owned foreign affiliates (in other words, itself) half of the royalties they collected abroad for “Daydream Believer.” EMI previously won similar cases against the heirs of Duke Ellington and Bert Berns (“Twist and Shout”), and was confident those precedents would control here; however, firm lawyers Nick Carlin and David Given persuaded the Court that Stewart sufficiently alleged that EMI’s conduct was actionable and that the case should go forward on the merits of the client’s claims. Rather than risk letting a jury evaluate the unfairness of its conduct, EMI quickly agreed to settle the case. The terms of the settlement are confidential. Any composers or songwriters who suspect they are victims of similar misconduct by their music publishers are invited to contact the firm.
April 29, 2015 -- Firm partners Nick Carlin and David Given filed a complaint for copyright infringement on behalf of Emmy and Grammy award-winning musician and composer Andrew Paley against Twist Animation, Ltd., the producer of the wildly popular online animated children’s series TUTITU TV, and against its principals, for using as its ubiquitous theme music a composition that Paley contends infringes his original song “Breakfast at Stubbs.” Paley’s song was first used in the film Shelf Life, directed by Paul Bartel (Eating Raoul), which hit theatres in 1993 and went on to become a cult classic. Twist began using its theme music for the TUTITU TV programming in 2010, releasing over 850 videos mostly through YouTube; those videos have since been seen a “staggering one billion” times, according to Twist, and the TUTITU TV channel on YouTube has garnered over 1.5 million subscribers. Assignment of the case to a federal district court judge is pending.
Model seeks to squash grape growers using her image without permission
October 30, 2014 -- Firm partners Nick Carlin and David Given have filed a complaint on behalf of firm client, Cyndra Busch, a model and actress, against grape producers Jakov Dulcich & Sons and Sunlight International Sales, for violation of her right of publicity. The complaint alleges that defendants have used (and continue to use) a photograph of Ms. Busch as the face of their "Pretty Lady" brand grapes without Ms. Busch's knowledge or consent. Her image has become so closely associated with the grapes that the company's website describes her as their "favorite lady," who has "become a recognized symbol of quality." The complaint seeks damages as well as an injunction. The firm has extensive experience in right of publicity cases.
Incredibeard sends a little chin music to right of publicity violator
September 5, 2014 -- Partner Nick Carlin has concluded a settlement on behalf of firm client Isaiah Webb, better known as Incredibeard, with a college in Michigan over the unauthorized use of the client's image on billboards and the college's website. The college agreed to cease and desist from the unauthorized uses and to pay an undisclosed amount of money to the client. The firm continues to handle all manner of unauthorized use cases for its performer and talent agency clients; in December 2009, the firm obtained one of the largest results for non-celebrities in California to date in a right of publicity case.
Firm opposes claims in Brian Jonestown Massacre copyright dispute
August 18, 2014 -- Partner David Given today prevailed on a motion to strike musician Jeffrey Davies’ answer and dismiss his counterclaims against firm client Anton Newcombe, a/k/a The Brian Jonestown Massacre. Through the lawsuit, Newcombe seeks a ruling that – contrary to Davies’ contention that he co-authored many of BJM’s musical works – Davies neither authored the works (with the exception of three songs) nor has any ownership interest in them. Davies attempted to assert counterclaims against Newcombe for, among other things, misappropriation, fraud, and copyright infringement. Just as he did during the previous round of motion practice, Magistrate Judge Nathaniel Cousins of the Northern District of California ruled in Newcombe’s favor on every issue, holding that many of Davies’ state-law claims are preempted by the Copyright Act and that he failed to properly plead other claims. The court granted Davies leave to attempt to cure the defects in his counterclaims but permanently dismissed Davies’ requests for statutory damages, attorneys’ fees, and punitive damages arising out of Newcombe’s alleged copyright infringement.
Firm partner advocates for artists at Copyright Office policy reform panel
July 30, 2014 -- Partner David Given participated in a roundtable discussion on remixes hosted by the Copyright Office and the Department of Commerce’s Internet Policy Task Force at the University of California Berkeley’s School of Law (Boalt Hall). The discussion was the final in a series of four roundtables (earlier roundtables were hosted at Vanderbilt, Harvard, and Loyola law schools) which emerged from a Green Paper designed to elicit discussion surrounding whether the current legal framework for the creation of remixes unacceptably impedes such remixing. Among the panelists offering their perspectives were lawyers, law professors, academics, artists, and industry and non-profit representatives. As a tireless advocate for nearly 25 years on behalf of creators, David discussed, among other issues, the need to preserve artists’ ability to say “no” to uses of their copyrighted works, the functionality of the current system for those artists and their representatives, and the imperative role that factual, academic research must play in determining what policy changes, if any, are necessary.
Firm presses copyright ownership case for Anton Newcombe, a/k/a The Brian Jonestown Massacre
May 12, 2014 -- Partner David Given overcame numerous procedural obstacles in his efforts to protect singer-songwriter and recording artist Anton Newcombe’s rights to the body of work (compositions and sound recordings) created by him as the Brian Jonestown Massacre. In response to musician Jeffrey Davies’ claims that he coauthored many of the BJM works, PE&G filed suit on behalf of Newcombe, seeking a ruling that (with the exception of three songs) Davies neither authored the works nor has any ownership interest in them. Rather than respond to the merits of Newcombe’s complaint, Davies filed a series of motions seeking to dismiss the suit on a variety of grounds, to strike Newcombe’s allegations, and/or to transfer the case to Los Angeles. In a carefully reasoned 13-page decision issued today, Magistrate Judge Nathaniel Cousins of the Northern District of California ruled in Newcombe's favor on every issue, and ordered Davies to answer Newcombe's allegations. The judge also set the matter for a case management conference next month.
Firm stakes out trademark claim for client in band name dispute
March 31, 2014 -- Partner David Given today submitted his main (trial) brief in the case of Wonderbread 5 v. Gilles, a matter pending before the Trademark Trial and Appeal Board. The case concerns a dispute over the band name "Wonderbread 5" and the filing of a trademark registration for that name by a disgruntled former band member following his exit from the band in 2009. The band (a popular San Francisco-based party band) is seeking to cancel that registration on grounds of prior use and fraud on the Trademark Office. The former band member's brief is due shortly, after which the TTAB will take additional argument and issue a decision in the matter.
Firm defends against multi-million dollar damages claim for alleged misappropriation of intellectual property
October 11, 2013 -- PE&G partner Randy Erlewine recently helped conclude a settlement of claims against firm clients Development Specialists, Inc., and California Assignments. The latter entity became the Assignee for Benefit of Creditors of a Silicon Valley semiconductor fabrication plant. Before shutting down, the plant refused to release certain physical and intellectual property belonging to one of its customers, until that entity paid a disputed invoice. Following the assignment, the customer filed suit, claiming millions of dollars in damages for alleged conversion and misappropriation of its trade secrets and intellectual property used in the fabrication of semiconductor wafers. The firm vigorously defended against these highly complex and hotly litigated claims. The customer filed a notice of settlement today.
Firm launches trademark infringement case for celebrated Bay Area gentlemen's club
September 18, 2013 -- Partner David Given was recently retained by the Gold Club of San Francisco in a case pitting it against a new gentlemen’s club opened last month in San Joseusing the client’s same name and similar marks and logos. The firm commenced the client’s case against the new club in federal court, followed by anexpedited motion for preliminary injunction. Following an hour-long hearing before Federal District Judge William H. Orrick, III, the court issued a carefully-reasoned 19-page decision, denying the request for a preliminary injunction but finding that the firm had raised “seriousquestions” about the nature of the new club’s various defenses toinfringement. Acknowledging the urgency of the matter, the court orderedthe parties to submit an “expedited schedule” for trial of the matter. The parties will be back in court on October 15th to discuss that subject and, most likely, to set the case for trial.
David Given moderates panel at digital music seminar
January 26, 2013 -- PE&G partner David Given helped organize and moderate a panel for the California Lawyers for the Arts during its 30th annual Music Business Seminar entitled "Fast Forward -- Protecting and Selling Music in the Digital Age" at the Berkeley Law campus. David's panel focused on the streaming music business, and featured speakers from Pandora, Stereotypes and the Electronic Frontier Foundation, as well as East Bay Ray, famed lead guitarist from punk-rock band (and firm client) Dead Kennedys.
Luce song infringement case settles
October 5, 2012 -- PE&G attorneys Nick Carlin and David Given, along with co-counsel Elliot Cahn, on behalf of their clients, the Bay Area band Luce (Tom Luce, Matt Blackett, Brian Kroll and Lawrence Riggs), have settled the band's copyright infringement lawsuit against Selena Gomez and the writers of Gomez's 2010 hit song "A Year Without Rain." Luce had contended that "A Year Without Rain" infringed on their song "Buy a Dog." The defendants denied the allegations. The terms of the settlement are confidential.
Luce files $1 million plagiarism lawsuit against Selena Gomez
April 25, 2012 -- PE&G attorneys Nick Carlin and David Given (along with co-counsel) recently filed a lawsuit in the San Francisco federal court on behalf of Bay Area band Luce (Tom Luce, Matt Blackett, Brian Kroll and Lawrence Riggs), who contend that pop sensation Selena Gomez's 2010 hit song "A Year Without Rain" infringes on their song "Buy a Dog." Buy a Dog was released by Luce in 2005 and was a #1 hit record on several radio stations around the United States, including WRLT in Nashville and KFOG in San Francisco, at both of which it was among the ten most played records in 2005. The firm's clients allege that the melodies in the choruses of the two songs (A Year Without Rain at 0:50, Buy a Dog at 1:00) are virtually identical. The complaint names Gomez and her band, The Scene, as defendants, as well as Gomez's writers and producers, Lindy Robbins and Toby Gad, her record label, Hollywood Records, and distributors, including Apple iTunes. The lawsuit seeks damages in excess of $1 million.
Firm obtains million-dollar judgment in trade secrets case
September 9, 2011 -- Judge Ellen Chaitin of the San Francisco Superior Court entered judgment in the amount of $1,106,654.86 against defendant Matthew Jones in favor of PE&G's client, Potrero Media Corporation (PMC), a leading performance-based marketing agency specializing in search marketing, lead generation and online publishing services. PMC contended that Jones, a former employee, had misappropriated trade secrets to start a competing business. PMC previously settled with co-defendants Lead Consortium and Ryan Ousdahl. After repeated discovery violations by Jones, the court found him in contempt and issued terminating sanctions, finding him liable on all counts. A court trial was subsequently held on damages and the court awarded the above amount. The court also made its previously issued Preliminary Injunction permanent.
Federal Court awards costs and fees in Roky Erickson copyright infringement case
April 4, 2011 -- United States Magistrate Judge Howard R. Lloyd issued an order on March 30, 2011, granting PE&G's motion and awarding costs and fees for the firm's collection efforts following entry of judgment in a case brought on behalf of legendary recording artist Roky Erickson and related entities. The firm's motion tested, successfully as it turned out, the proposition that a plaintiff in a copyright infringement case was entitled to an award of post-judgment costs and fees under the federal Copyright Act and California state law. For a copy of Judge Lloyd's order, click here. Roky Erickson just finished several highly anticipated and capacity shows at this year's South by Southwest Music Conference in Austin, Texas, including an appearance with cult-favorite, the Meat Puppets.
Firm participates in Copyright Society panel on copyright law and the music industry
February 21, 2011 -- David Given participated on a recent panel featuring several digital music business experts organized by the Northern California Chapter of the Copyright Society of the U.S.A. Entitled "Is Copyright Law Harming or Helping the Music Industry," the panel covered such topics as the workings of the Digital Millenium Copyright Act, the decisions in the Io v. Veoh Networks and Viacom v. YouTube cases, and the future of collective licensing regimes here and abroad.
Magazine seeks commentary from firm on controversial copyright legislation
February 9, 2011 -- David Given recently gave his views on the Combating Online Infringement and Counterfeits Act in an article appearing in the February 2011 issue of Inside Counsel. The Act (also known as "COICA") seeks to attack the growing menace of rogue websites, essentially digital stores (many operating outside the U.S.) dedicated to selling illegal and counterfeit products. The Senate Judiciary Committee unanimously approved COICA during the lame-duck session of the last Congress. The Act contains many controversial provisions, including granting the federal government the ability to seize domain names and to block websites. Some commentators have suggested that COICA could eviscerate the protections afforded internet service providers under the safe harbor provisions of the Digital Millennium Copyright Act, which Mr. Given judges a serious risk. The legislation should be of interest to anyone operating in the online space as a content provider. For a copy of the article, click here.
Firm obtains TRO and preliminary injunction for Internet marketing client
October 19, 2010 -- Extending its winning streak in trade secrets cases, PE&G successfully obtained a Temporary Restraining Order for client Potrero Media Corporation ("PMC") in San Francisco Superior Court. The order enjoins a former PMC employee and his alleged conspirators from using PMC's trade secrets and from doing business with PMC's clients. PMC, one of the nation's top online lead generation companies, alleges in the lawsuit that a former PMC employee conspired with a PMC client to steal PMC's customers and to use PMC's trade secrets to unfairly compete with PMC. The TRO was obtained only days after PMC realized what its former employee was doing and referred the matter to the firm. On August 24, 2010, Superior Court Judge Charlotte Woolard made a finding that PMC was likely to succeed on the merits and issued a Preliminary Injunction extending the injunction throughout the duration of the case. The litigation is now in the discovery phase.
Firm continues to protect performing artists from unauthorized use of their images
October 19, 2010 -- Building on its record-shattering settlement in Gonzalez v. Countrywide Home Loans, PE&G achieved another substantial settlement in a right of publicity/unauthorized use case. In 2006, Jodi Fung, a Los Angeles based television and internet personality, did a photo shoot for AT&T, for which she was paid $750 for a time limited license. After the license expired, AT&T continued to use the photos in advertising, in particular in large posters in its Cingular stores. Despite numerous requests from Ms. Fung and her talent agent, JE Talent, to AT&T and its ad agency to remove the ads or negotiate a new license, nothing was done. Within weeks of the case being referred to legal counsel, the firm negotiated a $65,000 settlement for the client.
Firm represents cult-rock hero Roky Erickson in copyright law dispute
May 6, 2010 -- PE&G recently obtained judgment in the San Francisco federal court in favor of Roky Erickson (of The 13th Floor Elevators fame) and related publishing and production companies on claims arising from the unauthorized sale and distribution of "Roky Erickson & The Aliens -- The Evil One." On its release, the album received four stars in Rolling Stone magazine (and later a 8.0 rating from pitchfork.com), and has since become an underground favorite. Roky's turbulent life in and out of the music business (he has been called "the great lost pioneer of rock and roll") was chronicled in the documentary film entitled "You're Gonna Miss Me" released by Palm Pictures in 2005. The judgment allows the clients to reclaim their rights to the songs and masters on this classic album.
Daily Journal features article by David Given on Viacom/Youtube litigation
January 26, 2010 -- California's leading legal newspaper, the Daily Journal, featured a guest column on the front page of its Jan. 25, 2010 issue by David Given, in which he gave his perspective on the ongoing copyright infringement battle between Viacom and YouTube/Google. For a copy of the article, entitled "Viacom v. YouTube: Clash of the Titans," click here.