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AUTHOR
Douglas Panzer
(610)797-9000
dpanzer@flblaw.com
March 6, 2015

Hall & Oates Go All Maneater on Haulin’ Oats Cereal Maker Over Trademark

Posted By Douglas Panzer @ 11:56 am
Filed under: Music,Offbeat,Trademarks

Lawyers on behalf of Darryl Hall and John Oates filed a complaint in federal district court in New York on Wednesday alleging trademark and service mark infringement, as well as unfair competition against Brooklyn, NY company Early Bird Foods & Co., LLC, based on the latter’s marketing and sale of (exorbitantly expensive) granola under the brand name “Haulin’ Oats.” One interesting part in all of this is that Hall and Oates aren’t just suing Early Bird because the company came up with a (semi-)creative, but unauthorized play on the singers names. No, Hall and Oates’ business entity, Whole Oates Enterprises, actually owns a federally registered trademark in the phrase “Haulin’ Oats” (U.S. Reg. No. 4345444). “This mark was assigned to Whole Oats in 2014 by a Monterey, California/Nashville, Tennessee cereal entrepreneur who appears to have been the first to go to market with the witty breakfast brand. According to the complaint against Early Bird, Whole Oats “entered into a business relationship [in 2014] whereby Haulin’ Oats assigned to Whole Oats its trademark and service mark rights in and to the mark HAULIN’ OATS (including the United States Trademark and Service Mark Registration identified above) and [Whole Oats] granted a royalty-based license back to Haulin’ Oats.”

So, everybody thought this was just about Hall & Oates protecting their music-related brand. Nope – they actually are in the cereal business. Who knew?!

I almost forgot to throw in the musical puns:

Hall & Oates say “I can’t go for that” over competing cereal brand…

Hall & Oates hope you say “your grits are on my list”…

Cereal maker trying to trade off the Hall & Oates name - say it isn’t so…

Read the complaint here: Whole Oats v Early Bird Complaint


January 29, 2015

Business Flexibility in Trademark Licensing as Taught by Taylor Swift

Posted By Douglas Panzer @ 4:27 pm
Filed under: Licensing,Music,Registration,Trademarks

Website Vox.com reported on January 28 (with a citation to Twitter user @imbeccable) that Taylor Swift has filed an application to register the trademark “This Sick Beat.” What most don’t know is this is just another step in Swift’s clearly well-advised operation of her growing business empire.

Swift presently has 100 live trademark registrations or applications (and a few dead ones). The marks even include registrations in 19 different classes for the name “Taylor Swift” or a stylized version of the name.

So why is this worthy of an intellectual property law blog entry? There is actually a good business lesson to be learned here.

From a legal practice note perspective, it’s interesting that Swift’s attorneys chose to file a separate application for each class of use for each mark. While not necessary, this certainly provides a very convenient mechanism – despite the initial data entry – for record keeping relating to, and potential licensing or assignment of, any of the individual registrations. The use of, for example, “Taylor Swift Fearless” could be easily licensed to one manufacturer by reference to the 3966410 registration, without any confusion regarding the right to use the mark on other classes of goods, while another manufacturer could be licensed to use the same mark on posters by reference to the 3966409 registration. Similarly, cancelation, abandonment, opposition or any other legal event affecting the registration itself remains contained to the individual registration.

And in case you’re wondering, registration and renewal fees would be the same whether filed as one application with multiple classes, or multiple registrations, each for a single class. Pretty good lawyering you got there, Taylor.

In case you’re curious, here are Taylor Swift’s current registrations and pending applications:

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

Taylor Swift Trademarks

(h/t Gretchen Geisser for cueing up this topic.)


September 16, 2014

Hey Hey Hey, Robin Thicke! Drunk and High Doesn’t Obviate Copyright Infringement

Posted By Douglas Panzer @ 4:08 pm
Filed under: Civil Liability,Copyrights,Music,Sound Recordings

Robin Thicke has been pretty well skewered the last year. He’s been called a misogynist and folks have called his huge hit song “Blurred Lines” such colorful descriptors as “rapey” and “a rape song.” As I discussed a while back, he also got involved with litigation against the heirs of Marvin Gaye over whether the same song ripped off Marvin. And now, according to every news outlet under the sun (since this is the most important story around), Robin Thicke is piling on Robin Thicke, saying he was high and drunk all last year. He’s also adding to his own slimeball factor by throwing the super-talented Pharrell Williams under the bus in the Gaye family copyright litigation.

So what does this have to do with this blog?!

Well, Thicke seems to be trying to a) cast off any claim to authorship of the song despite his earlier statements to the contrary; and b) relieve himself of any culpability for copyright infringement by claiming that he was too wasted to consciously infringe Gaye’s copyright. There’s just one problem here…but it’s big. There is no such thing as innocent copyright infringement. Courts use the analogy that “you can’t unring a bell.” That is, once you’ve heard a song, you can’t un-hear it. So you may or may not have consciously or intentionally infringed a copyright by writing or recording a substantially similar song, but if the songs are substantially similar and the copyright in the earlier work is valid, you still infringed the copyright.

Copyright infringement requires two factors to be shown: 1) Ownership of a valid copyright. 2) Copying of the plaintiff’s copyrighted work by the defendant.

Direct, purposeful copying is very infrequently capable of demonstration. Therefore, the analysis of copying frequently relies on whether a) the defendant had access to the plaintiff’s work, and b) whether the two works are substantially similar. In this case, access is a slam dunk. Not only was “Got To Give It Up” a big hit for Marvin Gaye (which in and of itself would be enough to show access), but Thicke even mentioned the song in a Billboard interview last year, according to CNN. This will come down to the analysis of substantial similarity. If the similarity is there, those who wrote “Blurred Lines” and those who recorded it are liable for copyright infringement.

I guess Thicke announced himself as a substance abuser and burned his bridges with Pharrell for no good reason. Nice move.

See also:
Daily Beast calls Blurred Lines “rapey”


August 20, 2013

Let’s Get it On! Robin Thicke’s Copyright Suit Against Marvin Gaye’s Heirs Blurs Lines Between Offense and Defense

Posted By Douglas Panzer @ 11:51 am
Filed under: Copyrights,Litigation,Music,News,Sound Recordings

“Blurs lines…”  See what I did there?

I write this blog under the willful delusion that “normal” people – you know, ones who spend their time focused on things other than legal this and that – read it.  With that perspective, I attempt to educate my readers about the workings of the legal system, and in particular, the area of intellectual property law, without getting bogged down in legal minutia.  Well, it’s not often I get to give you normal people something you REALLY care about…like Pharrell, Robin Thicke and the great Marvin Gaye.  So let’s make the best of it and use this situation to bore you with a lesson on declaratory judgment.

To watch gossip TV this week, you would gather that Robin Thicke, in response to being accused in the blog-o-sphere of ripping off Gaye’s “Got to Give it Up” (or Funkadelic’s “Sexy Ways” depending on who’s doing the accusing) has decided to go on the offensive by suing Gaye’s heirs and Funkadelic’s former label.  But this is not exactly the case.  Thicke is playing defense here in an effort to head off  already-threatened litigation and to ensure he gets to do so in the court of his choosing.

The process is called declaratory judgment.  Normally, a plaintiff in a civil lawsuit is the one who believes he or she has been wronged.  They sue for damages or an injunction preventing certain actions by the defendant.  In declaratory judgment, however, the plaintiff is simply asking a judge to declare the legal status of certain facts.  Of course, you have to have a legitimate claim for the court to review.  You can’t just walk in and ask a judge for an “advisory opinion” on a hypothetical situation.  But when you are a potential defendant and you need to clarify the legal situation in order to make informed decisions about your business going forward, you may be able to seek declaratory judgment from the court.

Declaratory judgment is available when there is a bona fide “case or controversy” and you have standing with the court to ask for a resolution to the case or controversy.  In this case, Marvin Gaye’s heirs and record label Bridgeport Music (owner of the rights to “Sexy Ways”) have been accusing Thicke, Pharrell and T.I. of copyright infringement but have not filed suit.  Settlement negotiations have been going on in private.  That threat gives Thicke et al the necessary case or controversy to ask for declaratory judgment.  In order to bring the dispute to a close, and presumably to do so in a court of his choosing, Thicke filed the declaratory judgment action asking the court to rule that “Blurred Lines” does not infringe the copyright of “Got to Give it Up” or “Sexy Ways.”

Some say it makes Thicke look guilty and appear to be the bad guy.  I say it’s a very good way to tell potential plaintiffs who want to cash in on the song’s success “we’re not gonna sit around and negotiate with you.”  Smart move if you ask me.


January 7, 2013

How Do I Register Copyrights For My Band’s CD (Part 3)

Posted By Douglas Panzer @ 11:37 am
Filed under: Copyrights,How To,Music,Sound Recordings

Alright, so if you’ve gotten to this point, you’ve already read Parts 1 and Part 2 and you just need to register the copyright in an underlying song that was written by people different from those who played on the recording. If any of this is not the case for you, or you’re confused. I STRONGLY suggest you go back and start at Part 1.

Let’s jump right into registering the songs you wrote. Again, this is only necessary where the writers of the songs are different from the people who played on the recordings that we registered in Part 2.

Assuming you are at the shopping cart and just registered the Sound Recordings, click “Add More Services.”

This process is almost identical to what you did in Part 2.
1) Click “Register a New Claim.”
2) Click “Start Registration.”
3) Select “Work of the Performing Arts” and click “Next.”
4) Enter the album title as “Title of Work Being Registered” and each of the song titles as “Contents Title.” Click “Next.”
5) Just as we did before, specify whether you have published the songs already.

6) You are now on the Authors page. Here you want to enter only the people who wrote the song – not other bandmates or studio musicians or anyone else. Only people who wrote the songs. When you hit “Save” for each person, it will ask you to specify their contribution (e.g., music, lyrics, etc.). Select the appropriate things for each person and hit save. Repeat this until you’ve listed all the writers, then click “Next.”

7) Specify the Claimants. It should match the writers unless there was a written agreement otherwise, or if someone’s contribution was a work for hire.

8) Specify if there are any parts of your song that were pre-existing. Did you quote someone extensively? Did you specify the use of a clip or sample? Most likely you’re going to skip this by clicking “Next.”

9) Fill in the Rights & Permissions contact.
10) Fill in the Correspondent in case the Copyright Office needs to contact you.
11) Fill in the name and address for the certificate.
12) Special handling – you most likely want to skip this. If you think any of them applies to you, you should probably be chatting with a lawyer at this point.
13) Certify your submission.
14) Review it and add it to the cart.

Now you’ve got your Sound Recording and you Work of the Performing Arts applications filled out and added to your shopping cart. Hit “Checkout,” pay your money, and voila! You should be hearing from the Copyright Office.

Disclaimer: It’s very important that you do this right. While I’ve attempted to help you through the copyright registration process, this is not legal advice. If you have ANY questions, you need to contact a lawyer and get them to help you complete the process properly.


January 6, 2013

How Do I Register Copyrights for My Band’s CD? (Part 2)

Posted By Douglas Panzer @ 10:27 am
Filed under: Copyrights,How To,Music,Sound Recordings

In Part 1 of this article, I explained a whole bunch of preliminary matters related to copyright registration for your band’s songs or albums. Those preliminary matters are pretty important stuff. If you haven’t read Part 1, you definitely should start there and then come back here to get started.

Now let’s jump right into registering our copyrights.

Online Registration
You should take advantage of online registration for several reasons. First, it’s convenient. You don’t have to mail anything and you can simply upload your music, type in your info, pay by credit card and be done. Second, there is a reduced filing fee, which right now is $35.

1) Go to the Copyright Office’s website at www.copyright.gov/eco/.

2) You’ll see a brief description of the “eCO Online System.” Below that, there’s a link that says “Login to eCo.” Click the “Electronic Copyright Office” icon next to that.

3) Click the “Continue to eCO” button.

4) At this point you’re asked for login information. If you haven’t registered…well, register. If you already have an account, log on.

5) You now arrive at your Open Cases screen.

Open a New Case
1) On the left side menu, under the heading “Copyright Services” click “Register a New Claim.” On the next screen, click the gray box that says “Start Registration.”

2) Let’s start by registering the Sound Recording. So, in the “Type of Work” dropdown list, select Sound Recording. At the top, click the “Next” button.

3) Now, here’s where we need to start being smart so we save ourselves all that money I talked about. Because we’re registering a whole album, we can register all of the songs on that album at once rather than doing each song individually.

4) You see an empty list of works. Let’s start by adding the album itself. So, click the “New” button. In the “Title Type” dropdown list, select “Title of Work Being Registered.” In the box below it, type the album title. If it’s a demo, an EP, whatever…give it a title. Even if it’s “Demo EP.” Now click the gray “Save” button above. You are returned to the list of works and you should see the album title.

5) Now we need to list the songs on the album. Click the gray “New” button again. The songs on the album are the contents of the album, right? So, in the “Title Type” dropdown list, select “Contents Title.” In the box below it, type the name of the first song on the album. Click “Save.” You are now returned to the works list and you should have the album title and the first song.

6) Repeat step 5 for each song on the album. When you’ve finished, click the “Next” button on the works screen.

7) The next screen asks if the work has been published. If you’ve sold the CD, posted the songs on Myspace, Sonicbids, or otherwise made the recordings public (I mean THESE recordings. Not another recording of the same song.) you MUST say yes. Answering incorrectly is not going to help you. Tell the truth. If you select yes, you will be asked for some extra information. “Year of Completion” means when the recording was finished. “Date of First Publication” means when you sold it, put it online, etc. (It does not mean when you first played it at a gig.) If you sold a CD at a gig, put down the date you did that. “Nation of First Publication” is where you published it. If you’re reading this, my guess is you’re going to select United States. You most likely want to ignore the other boxes, so click “Next.”

8) We’re now at the point where you need to name the authors of the work. “Authors” is a legal term in the copyright field. In this case, it means who wrote the song. If you and your 3 bandmates sat in a room and jammed, mixing and matching and tweaking until you came up with a song, you’re all authors. And in our example, since we’re talking about who played on the recording, all of the players are “authors.” Click “Add Me” to add yourself and “New” to add the other people. For each one, put in name, year of birth, citizenship, domicile (what country you permanently live in). You should also select “no” for the “work made for hire” question. The only way this is “yes” is if you commissioned someone to write with you, or paid a studio musician. If you did pay a studio musician and they signed a release, put them as an author and choose “yes.” Click “Save.”

9) Now specify the person’s contribution. For someone who played on the recording, check “Sound Recording” and “Performance.” Click “Save.” Repeat steps 8 and 9 until you have all of the people who played on the recording listed. Then click “Next” to move on.

10) You’re now asked for the “Claimants.” The Claimant is the person (or people) who will get ownership of the registered copyright. If you did not specify anyone as contributing a “work for hire” in the previous step, you should add all of the people from steps 8 & 9 to this list. The only scenarios where this list will differ from the authors list is if a) someone’s contribution was a work for hire (in which case you leave him off) or b) the authors have already completed a copyright assignment where someone gave away or sold their rights. In those cases, the claimants would be the ones who were not contributing works for hire, or in the case of (b) the ones who received the assignment. If none of this sounds familiar, your claimants will almost certainly match your authors. Once you have all these entered, click “Next.”

11) This step is about limiting your claim. You only need to fill this out if you sampled from an earlier work, took something from the public domain like “When The Saints Go Marching In” or based your song on a song that has otherwise already been registered. Most likely you will want to skip this step by clicking “Next.” But again, make sure you answer this question truthfully (as with all portions). If you don’t you could end up with a worthless registration.

12) The next three steps are easy (FINALLY!!!). In “Rights & Permissions” put in the name of the person that should be contacted if people want to use the song in a movie, want to cover the song, etc. Then enter the person you want the Copyright Office to contact about this registration. That’s the correspondent. Finally, put in the name and address you want the official copyright certificate sent to. If you’re doing the legwork here, it’s very likely that all 3 steps will be you. Easy, huh?

13) Next is the screen asking about special handling. You almost certainly will not want to check any of those boxes. If any of them sound like they might apply, you probably have a lawyer involved already and you should get their opinion. Otherwise, skip this step and click “Next.”

14) Now you’ve reached the Certification page. This is where you state that you’ve provided truthful information. It’s important that you have done so. Assuming you have, type your name, check the box and hit “Next.”

15) DISABLE YOUR POP-UP BLOCKER BEFORE YOU DO THIS STEP – You’ve now finished entering all the info you need. Review it, make any necessary corrections and click “Add to Cart.” (This part seems to be slow, so just wait til it goes to the next screen.) If you read the parts above and you don’t need to fill out a separate Work of Performing Arts registration, checkout and pay your money.

16) Once you submit your payment, a pop-up window will appear asking you to upload your songs. Choose your MP3 files from your hard drive, submit them, and that’s it!

Congratulations! You’ll be hearing from the Copyright Office.

If you do need to do a separate Work of Performing Arts registration, go on to Part 3.

Disclaimer: It’s very important that you do this right. While I’ve attempted to help you through the copyright registration process, this is not legal advice. If you have ANY questions, you need to contact a lawyer and get them to help you complete the process properly.


January 5, 2013

How Do I Register Copyrights for My Band’s CD? (Part 1)

Posted By Douglas Panzer @ 10:30 am
Filed under: Copyrights,How To,Music,Sound Recordings

How the heck do I copyright my band’s songs or my band’s CD?

This is a very common question, and the online registration process from the Copyright Office’s website is not the most intuitive thing in the world. So, I’m going to try to walk you through it in as simple a manner as possible. After I explain a bunch of stuff, there’s a list of steps at the bottom that you can print out and use as a guide.

Preliminary Matters
Let’s quickly clear up a couple things first.

0) ”Disclaimer“ - This is important stuff and you need to get it right to protect your rights properly. I intend to give you an overview in this 3-part series, but I cannot, and do not, provide legal advice over the Internet. If anything you read here, or encounter while registering is not clear, you should STOP AND CONTACT AN ATTORNEY.

1) ”Copyrighting“ - When you file a copyright application, you’re not “copyrighting” your songs. The copyright in your songs comes into existence the moment you “fix it in a tangible medium.” What the heck does that mean? Well, it just means that once you make a recording of the song, the copyright exists and belongs to you. You’re simply registering that copyright with the Copyright Office.

2) Why Register? - The long and short of it is that you want to be able to protect yourself if somebody rips you off. Registering the copyright(s) makes it possible for you to stop an infringer from continuing to profit from a song they “stole” from you. Without a registration, you may be able to stop them from selling any more copies, but you won’t get any compensation. Having the registration allows you to receive money damages if somebody rips off your copyrighted song. It’s also important, for legal reasons, to register within 3 months of releasing the material. If that 3 months has expired, you should still register. But you’re in better shape if you register right away.

3) Save Yourself A LOT of Money - The registration fee for online filing at the time I’m writing this is $35. If you’re not too savvy with copyright registration (which is not something you should expect yourself to be savvy in) you could end up paying $35 per song to register the recordings, and maybe another $35 per song to register the work itself if the writers are not the performers. That’s a ton of money. You could end up spending $840 to register a 12-song album. Do it right and you can register that same 12-song album for $35 total ($70 if the writers and performers are different). A savings of $770 is a nice American Standard Strat, a used SG or a set of bass bottoms for your PA. Follow the instructions below and save yourself a lot of money.

4) Before You Start - Collect the following information: Legal name, address, year of birth and country of citizenship for all of your bandmates/co-writers. If you don’t have this, you’re going to end up having to save your application in the middle and come back later to finish it.

5) !!!VERY IMPORTANT POINT!!! – What Kind of Work Am I Registering? Read this section a couple times, because it’s not necessarily intuitive, but it’s important. If the people who wrote the song are not the same as the people who played on the recording, you need to fill out two different forms.

Let’s say I’m in a band with 3 other guys. I play drums, there’s a bassist, a guitarist and a guitarist/singer. If all four of us collaborate to write a song and all four of us go into the studio and record the song (or in our basement, or wherever), we only fill out one application. In that case, we only need to register the work as a Sound Recording.

Let’s say the same band is involved, but the singer and bassist write the song (think Iron Maiden or the Beatles) and all four of the band members play on the recording. In this situation you need to fill out two applications. One is to register the song that the singer and bassist wrote (that’s a Work of the Performing Arts). The second application is to register the actual recording that all four band members laid down. As above, that’s a Sound Recording. This means that if someone wants to use the actual recording we made, all four band members get paid. If someone wants to cover the song by making their own recording, only the writers get paid.

As I said, re-read that section if you’re confused, but the bottom line is, if the list of writers is not identical to the list of performers, fill out two forms (SR and PA). If the writers and performers are the same, just fill out one (SR).

Who Owns What? 
When you register a work created by multiple people, each person is presumed to own an equal share. Two writers? That’s 50-50 in the PA work. Four performers? That’s 25-25-25-25 in the SR. If you want the ownership to be different, you need to fill out an agreement between you afterward. That agreement is known as a copyright assignment and it lets you assign rights however you want. This is a simple agreement and you may be able to find good examples online. Note that this is not a function of the Copyright Office. This is something you do on your own (hopefully with the help of a lawyer to make sure everything looks good).

OK, let’s move onto Part 2 and get started.

Disclaimer: It’s very important that you do this right. While I’ve attempted to help you through the copyright registration process, this is not legal advice. If you have ANY questions, you need to contact a lawyer and get them to help you complete the process properly.


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