Fort Lauderdale attorney Michael I. Santucci recently helped family members of Bob Marley settle a federal lawsuit regarding intellectual property rights relating to the reggae music legend, his mother Cedella Marley Booker and Miami’s Nine Mile Music Festival.
Archive for the ‘entertainment’ Category
People love March Madness. There’s no other competition in the United States so open ended. More than 60 of the nation’s premier college basketball teams compete with triumphs, upsets, and finish with an undisputed champion. Diehard and casual fans of college basketball fill out more than 40 million brackets each year trying and predict the winner. Even the president is in on it, and he’s no slouch. His bracket is currently ranked in the 98th percentile. March Madness lives up to its name. But it’s more than pure sports entertainment, there’s a fascinating legal aspect to its existence as well. The trademark “March Madness” was settled more than fifteen years ago when the courts decided the moniker was so important it deserved to be reclassified. Papers labeled it “case of the year” in trademark law.
The phrase march Madness actually began use as early as in 1939 when the term was included in a poem about the March tournament. The Illinois High School Association (“IHSA”) later applied it to their annual basketball tournament. It was billed as the premier high school tournament of the United States. It was even broadcast on national television. The IHSA filed for federal registration in the early 1990s, and received protection a few years later.
As they included more teams, the event grew in notoriety. In the early 1980s a Chicago sports caster began referring to the event as “March Madness” and it stuck. Importantly, the term was widely applied to the event by the public before the NCAA ever used it themselves. So when the IHSA filed for trademark of the phrase March Madness, the NCAA objected under their common law usage. The IHSA then filed suit against GTE Vantage, Inc., which was developing a basketball sport video game, licensed by the NCAA, called “NCAA Championship Basketball”. The words ‘March Madness’ were included on the cover and in the game itself.
This was a case of reverse confusion. The NCAA was the more recognizable establishment than the IHSA so the trademark became associated with them by the public. Even though the IHSA used the term far longer than the NCAA, they worried that their trademark would suffer brand confusion, or their tournaments would be misinterpreted as sponsored by the NCAA. Normally the senior user of a mark would stop the junior from applying it. But when the case came to court, the judge ruled otherwise. The Central District of Illinois judge decided the IHSA’s brand had become diluted by the NCAA. Its connotation created by the public sphere made a ‘dual-use term’ that applied to both users equally. The IHSA couldn’t control what the public applied the term ‘March Madness’ to, no matter how much it might damage their brand.
Forced to share the mark, the two organizations eventually created a limited liability corporation, the Match Madness Athletic Association (“MMAA”), to control the trademark. Both partners were made permanent licensors. The MMAA has protected the term “March Madness” since in court cases against other prospective sporting events, car sales, and website name infringement. In latter cases they found from their focus group that 83.7% of people had heard of March Madness and 70% associated the term with basketball.
Though the mark is strong in popular culture, it’s important to remember how it can serve as a wider lesson. Do not let your trademark lose its public significance, and take all efforts to make sure the public is aware of its real intention and application. Allowing your trademark to become public domain or synonymous with another product is self-defeating. Just like how picking teams for your bracket based on the ferocity of their mascots doesn’t do you any good and is self-defeating. Or ‘self-defeating’ like Florida State. Or Duke. You get the picture.
The District Court of the Western District of Pennsylvania recently granted summary judgment in favor of the Pittsburgh Steelers of the National Football League regarding a lawsuit for trademark infringement of the “Terrible Towel” trademark. Beginning in 1975, at the initiation of radio broadcaster Myron Cope, fans of the Steelers have waved yellow and black colored rally towels depicting the words “Terrible Towel” as way to show support for the team during games. These towels have gained substantial public recognition due to the Steelers’ recent Super Bowl victory in 2008, thus making Steelers merchandise a top seller.
Non-profit organization Allegheny Valley School Foundation (“AVS”) is the owner of a federal trademark registration for the phrase “Terrible Towel” for use on goods such as T-Shirts, which has been in continuous use for over two decades. The Steelers are the exclusive licensee of this mark, which provides them the right to sell merchandise with the “Terrible Towel” mark.
The trademark infringement lawsuit was initiated due to the Defendant, Eugene Berry Enterprise’s, sale of T-shirts bearing the phrase “The Terrible T-Shirt a Pittsburgh Original” in black and gold coloring. The Defendant filed a federal trademark application with the United States Patent and Trademark Office (“USPTO”) in May of 2011 to register the “Terrible T-Shirt” phrase as a trademark for use on T-Shirts. After refusing to withdraw the application, Defendants placed orders for T-Shirts with the “Terrible T-Shirt” design printed in black and gold. Eugene Berry allegedly gave employees of National Retail Graphics a letter from AVS purporting to give permission to Eugene Berry Enterprises to sell the T-Shirts.
Under Federal law, in order to be successful in a federal trademark infringement lawsuit, the Plaintiff must prove the following elements: 1) the trademark in question is valid and legally protectable; 2) plaintiff owns the trademark in question; and 3) the defendant’s use of the Plaintiff’s mark in interstate commerce is likely to cause consumer confusion. The third prong, likelihood of consumer confusion, is determined by an application of several detailed factors.
District Court Judge Arthur J. Schwab found that the phrase “Terrible Towel” is legally protectable because it is not a descriptive term. Judge Schwab instead compared its trademark value to marks such as Kodak and Lifesavers, which are highly distinctive marks, thus indicating a high level of legal protection. Schwab emphasized the strength of “Terrible Towel” mark due to its highly visible use in sports television broadcasts and media articles, which has caused consumers to identify the towels with the City of Pittsburgh and the Steelers franchise. Judge Schwab bolstered his conclusion that the “Terrible Towel” mark is famous due to the fact that towels bearing the mark have been taken into space and waved on the top of Mount Everest.
Judge Schwab further noted that the phrases and coloring of Defendant’s T-Shirts were similar to Plaintiff’s goods using its mark. Judge Schwab concluded by finding that Defendant’s T-Shirts were likely to confuse consumers into believing that the T-Shirts were official Steelers merchandise or otherwise sponsored by the Steelers, especially due to the fact that Defendant specifically marketed his T-Shirts to Steelers fans.
Read the full article here:
The attorneys of the law firm of Santucci Priore, P.L. have been retained by the Defendants in the case of Fifty-Six Hope Road Music Limited v. Richard Booker, Bob Marley Movement of Jah People, Inc. and The Bob Marley Heritage Corporation, Case No. 1:11-cv-24326-MGC which is currently pending in the United States District Court in and for the Southern District of Florida in Miami. The Plaintiff alleges trademark infringement, unfair competition, dilution and unauthorized use of name and likeness claiming the exclusive right to use various Marley-related trademarks as well as Bob Marley’s name and likeness.
According to public records and the Defendants, the Defendant company Bob Marley Movement of Jah People, Inc. was a family company formed back in 1978 for the purpose of a fan club and to distribute Bob Marley and the Wailers merchandise. For years, the family company was run by Richard Booker and Cedella “Mama Marley” Booker who is the mother of both Bob Marley and Richard Booker. Their mother recently passed away leaving Richard Booker as one of the remaining principals of the company. The Nine Mile Reggae Music Festival which takes place in Miami in March of every year is operated by the Defendants Richard Booker and Bob Marley Movement of Jah People, Inc., and is reported to have provided one million meals to hungry families.
The complete Press Release of the Defendants Richard Booker, Bob Marley Movement of Jah People, Inc. and The Bob Marley Heritage Corporation is set forth below:
FOR IMMEDIATE RELEASE
December 8, 2011
CONTACT: Attorney Michael Santucci
(954) 351-7474, firstname.lastname@example.org
Reaction to Marley Family Dispute
“I am heartbroken by what is happening.”
This was the immediate response by Richard Booker, brother of reggae music legend Bob Marley, reacting to a recent lawsuit filed against him by a company owned by his nieces, nephews and sister-in-law in the United States District Court in Miami, Florida. Booker said, “This would not have escalated to this point if our mother were still here.”
Nonetheless, the defendants, The Bob Marley Movement of Jah People, Inc., The Bob Marley Heritage Corp. and Richard Booker recently retained trademark/entertainment attorney Michael I. Santucci of the firm of Santucci Priore, P.L. in Fort Lauderdale to defend the lawsuit.
Despite the suit, Booker confirmed his plans to market a line of products based upon his mother Cedella “Mama Marley” Booker’s recipes to continue her legacy. Mama Marley died April 8, 2008. Booker and his mother were longtime partners in various business ventures.
For example, the Mama Marley food project is an offshoot of the success enjoyed by the several Jamaican restaurants that have operated under the Mama Marley name for years and which made the progression to a retail line of Jamaican inspired foods. A portion of the line’s profits will go to charity.
When Richard Booker told his niece Cedella Marley Minto about his plans for the Mama Marley food line years ago, “she couldn’t have been more enthusiastic or encouraging,” according to Booker. Minto operates the day-to-day business of 56 Hope Road Music Limited, the plaintiff in the lawsuit. As time passed, she insisted that a piece of the trademark rights be included in her company, 56 Hope Road, a concept to which Booker and Mama Marley were at first receptive. However additional demands were soon made including majority control and requirements that Booker contribute Mama Marley’s likeness, biography, voice, etc. to the venture. “It was too much. I couldn’t put out her gospel album, children’s album, or cookbook,” Booker remarked.
Another count of the complaint seeks to enjoin the presentation of the Festival by The Bob Marley Movement of Jah People, Inc., insisting that that company now change its name. The festival has been run by Mr. Booker for almost two decades. Attorney Michael Santucci will call upon the Plaintiff to explain why it waited until now to challenge The Bob Marley Movement of Jah People’s activities, which was formed back in 1978.
Over the last 18 years, the enormously successful music festival promoted by Booker’s company celebrates Bob Marley’s birthday and has become an annual Miami tradition. It has been a family affair with his nieces and nephews providing spirited performances that have brought audiences to their feet in their father’s memory. Not only have they performed at the event, they have appeared in the promotion and advertising of the event presented by the “Movement,” a name inspired by Bob Marley himself.
The 2012 Nine Mile Music Festival is scheduled to take place in Miami on March 3, 2012. As usual, concert goers will be required to make a food donation as a part of the price of admission, a practice that has been estimated to have provided over one million meals to an array of charities.
The music legend personally caused the formation of the Movement for their mother in February 1978. Originally named “Bob Marley and the Wailers Fan Club, Inc.,” the company’s purpose was to operate a fan club and to manufacture and supply Bob Marley & the Wailers souvenirs and merchandise which included tie died shirts, posters, pictures, towels, books, and various other branded items. “Plaintiff 56 Hope Road was not the first to use my brother’s name or likeness on products as a trademark. It was the Movement,” Booker said.
Booker and his mother felt that it was only fitting that when Bob Marley passed in 1981, that the company that had served as his fan club pay tribute to his memory in song and charity by the presentation of the annual festival.
In addition to operating the “Movement,” Booker also operates Nine Mile, a tourist destination in the Jamaican mountains where Bob and their mother were both born, lived and where they have been laid to rest. The location has been the subject of numerous travelogues and attracts visitors from all over the world each year.
Booker does not think that either his mother or brother would ever have approved of allowing a family matter to become a public dispute that features unfounded allegations and name calling, according to Booker. “In the defense of this case,” he said, “I am honoring my brother and our mother, whose memories I cherish each day.”
Kim Kardashian is reportedly quite upset over an advertisement for Old Navy (watch below) that she believes intentionally features a look-alike. The socialite and reality TV star has filed a $20 million lawsuit against the retail chain.
Reports indicate that a California judge recently accepted “Festivus” as an inmate’s stated religion. The issue arose when the inmate requested healthier, kosher-style meals in jail. In order to achieve this request, the inmate stated that his religion was “Festivus.” The inmate, who was granted the request, has now served out his sentence.
The Festivus holiday became popular by the sitcom Seinfeld, which included the slogan “Festivus for the rest of us.”
Easily argued as one of Fox’s most successful TV shows, the hit “Glee” seamlessly inserts dry comedy into a musical. Glee focuses on a group of high school kids who, albeit social stigma, break into song and dance featuring both current top-10 and greatest hits of some well-known artists. Among them? Britney Spears, Madonna, and even Depeche Mode.
All this entertainment doesn’t come without a price, however. All of the songs featured on Glee, whether in their entirety, or featured as a derivative work containing a mash-up of two or more songs, require a license of some kind. As so appropriately quoted in the article Copyright: The Elephant in the Middle of Glee Club, “the [Glee] club helps cheerleading coach Sue Sylvester film a near-exact copy of Madonna’s Vogue music video. (the real-life fine for copying Madonna’s original? up to $150,000). Just a few episodes later, a video of Sue dancing to Olivia Newton-John’s 1981 hit Physical is posted online (damages for recording the entirety of Physical on Sue’s camcorder: up to $300,000).”
In the real world, some of these may fall under fair use due to educational exceptions, but that isn’t always the case. In fact, damages can be pricey for using copyrights without permission, up to a few hundred thousand dollars a pop.
Australian band Men At Work was recently ordered to pay 5% of its royalties from the 1983 hit song “Down Under” to the owner of a 76-year old folk song. Down Under’s distinctive flute riff is reported to have been used from the folk song, “Kookaburra Sits in the Old Gum Tree.” It is also reported that the suit was initiated in Sydney Federal Court after a television quiz show suggested the similarity.
The owners of “Kookaburra,” Larrikin Music, reportedly asked for 60% royalties obtained from Down Under, which the Court found to be excessive, stating that the riff only appears in two bars of the song. The Court seemed to disregard Men At Work’s argument that the copying was “unconscious.”
Last week, David Byrne filed a lawsuit against Florida Governor Charlie Crist for unauthorized use of the Talking Heads song “Road to Nowhere” in a campaign ad. Byrne, who is seeking $1 million in damages, has never licensed his songs for commercials and believes that the spot suggests he endorsed Crist’s candidacy.