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Geekview IP Week(ish) in Review
The Marleys — as musically talented as they are litigious!
Boy, was this album title prophetic. I doubt there’s a person on the planet who would challenge Bob Marley’s legendary status, even if you don’t love his music. His heirs, for one, certainly will not let you forget how legendary he is nor that they own the rights to Bob Marley’s surviving intellectual property rights. The Marley heirs’ corporation Fifty-Six Hope Road Music has filed 25 trademark (No 840) and copyright (No 820) suits since 1997. The most recent suit was filed on December 1, 2011 against one if Bob Marley’s sons, Richard Marley Booker (whom the complaint refers to as Richard Booker, apparently downplaying the familial relation) for trademark infringement, and dilution, copyright infringement, violation of Marley’s right of publicity, seeking cancellation of Booker’s pending trademark registration for MAMA MARLEY, which Fifty Six Opposed (here) back in August, 2008. Though Marley Booker claims MAMA MARLEY does not refer to any living individual, Fifty Six believes otherwise, and it also takes issue with Booker Marley’s use of 9MILE and NINE MILE for music festivals promoted on its <bobmarleymovement.com> domain. I’m left to wonder which party’s tune will resonate most with the federal court.
And in other entertaining entertainment legal battles . . .
Cowboys & Aliens & Litigators, oh my!
It never ceases to amaze me when people file lawsuits claiming that a lackluster film infringed their rights in their own (also lackluster?) work. Cowboys & Aliens got a 6.3 average user rating on IMDB, which describes the film as, “A spaceship arrives in Arizona, 1873, to take over the Earth, starting with the Wild West region. A posse of cowboys and natives are all that stand in their way.” Doesn’t exactly leave you wondering about its rating, does it? Not even Harrison Ford could save this film from doom. While cowboys and natives may have stood in the way of the aliens, nothing’s gonna stand in graphic novelist Steven John Butsi’s way of filing a lawsuit against Universal Studios, and Dreamworks for copyright infringement. Butsi claims the studios ripped off his 1994 Cowboys and Aliens story. Too bad for Butsi is he’s fighting this case without a full arsenal; having failed to make timely copyright registration, he is unable to seek statutory damages or attorneys’ fees. The complaint focuses on general commonalities between Butsi’s work and Universals (scènes à faire), so unless Butsi is able to show more detailed similarities, I just don’t see how he’s gonna win this battle. And in a battle of the bands . . .
Blackstreet wants Blackstreet imposters blacklisted.
Blackstreet Entertainment owns the intellectual property rights in the works and marks of the band Blackstreet, a group founded in 1973 by Teddy Riley and Chauncey Hannibal, aka Chauncey Black. Blackstreet recently sued two of its members, Mark Middleton and Eric Williams (who’s apparently not popular enough to have a Wikipedia entry) for posing as Blackstreet. According to the lawsuit and preliminary injunction motion filed on December 1, 2011 and the first amended complaint filed on December 6, 2011, then Middleton and Williams joined Blackstreet after their first album was released and have performed with the band since that time under work for hire agreements. Neither Middleton nor Williams have any rights in the works or marks of Blackstreet. The complaint alleges that they have posed as the band, booking unauthorized performances and impermissibly using the images of Riley and Black to promote themselves. Sounds like Middleton and Williams bit the hand that fed them and now that hand’s gonna give them a spanking they won’t soon forget. While Blackstreet whoops its band members into shape, the Oakland Raiders hope to do the same to Nation’s Giant Hamburgers . . .
NFL bets football fans are dumb enough to confuse Raid A Nation’s marketing campaign with the Oakland Raiders’ RAIDER NATION.
Nation’s Giant Hamburger burger chain has 26 restaurants in California, including the original Nation’s restaurant in Jack London Square in Oakland, CA. The Oakland Raiders are a NFL football team that plays in — you guessed it — Oakland, CA. The Raiders and the NFL sued Nation’s for the “ambush advertisement” shown above, which the football team and league claim “falsely depicts Nation’s as enjoying some sort of official marketing relationship with the Raiders.” Nation’s ran this ad on a billboard adjacent to the football arena in which the Raiders play. The league claims the location of the billboard is evidence of the burger chain’s intent to profit by pretending to have a relationship with the Raiders team without paying for such rights. RAIDER NATION is federally registered for on-line retail store services and a website featuring statistics (here) and for clothing (here), but are these or any of the Raiders’ 15 registered marks really likely to be confused with Nation’s Burgers’ RAID A NATION’S campaign? We’ll have to wait and see whether the Court will swallow the Raiders argument or throw a flag at them. Meanwhile, further down the California coastline another IP sports challenge is being volleyed . . .
Babes in bikinis spiking serves over tequila; what more could you ask for?
According to the lawsuit filed by DFA PVA II Partners, LLC (DFA), its predecessors and it have used the MANHATTAN BEACH OPEN service mark “for decades.” Apparently, the trademark attorney who filed the trademark registration application for MANHATTAN BEACH OPEN wasn’t so good at math, as he listed a first use date of the MANHATTAN BEACH OPEN mark for “entertainment services, namely, arranging, organizing, and conducting athletic competitions, exhibitions, and community festivals and cultural events in the nature of volleyball games, tournaments and competitions, featuring live music concerts, dj’s, visual and audio performances, and dance performances” as 2001, which is only one decade by my calculations. The defendants in the case include IMG Worldwide, USA Volleyball, Leverage Agency, Jose Cuervo, and the city of Manhattan Beach, each of whom DFA claims infringed on its alleged rights in the MANHATTAN BEACH OPEN service mark by offering an “unofficial” MANHATTAN BEACH OPEN volleyball tournament this past summer. According to an article on Easy Reader, Manhattan Beach city attorney Roxanne Diaz stated that the city has held the tournament for 51 years and will defend its trademark rights. The city’s rights appear to be superior (by at least 41 years) to the use claimed by DFA, and since U.S. trademark rights are based on common law, my suspicion is that Manhattan Beach is will win this match after numerous sets of motion practice.
Only an Oyster House could find itself in such a pickle . . .
No, Wintzell’s is not being sued for oyster harassment! It’s being sued for copyright infringement by Media Partners corporation, which claims that Wintzell infringed its copyright in its Give ’em the Pickle customer service training DVD after having licensed the same product in VHS format in 2005. Media Partners claims that Wintzell’s made multiple unauthorized copied of the pickle DVD video, which it then distributed to each of its locations. According to the complaint, Media Partners’ demands that Wintzell’s cease and desist went unanswered. This got Media Partners in so much of a stew that it sued seeking to enjoin Wintzell’s from continuing to infringe the pickle video. If the facts of the complaint are true, Wintzell’s going to have to come up with something more substantial than a half-baked argument to avoid big damages for willful copyright infringement.
Not every grievance needs to be aired in court! If you stand to recover less than you stand to gain, then your lawsuit is likely to only benefit your lawyers, and maybe, just maybe it shouldn’t be pursued. Just ’cause a law firm agrees to take on your case doesn’t mean they can or will win it.
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It was interesting to see such a balanced and researched look at the Booker/Marley lawsuit. However, there are some things that you might have missed or purposely omitted. MAMA MARLEY is a restaurant founded for, and with, Cedella Marley-Booker (Bob Marley’s mother). Obviously, naming the restaurant after her can’t be in contention with Rita’s claims to the Marley name, can it? And, NineMile is merely a part of Jamaica where Bob grew up, how much of a claim can they have to a geographical location as being ‘theirs’. I guess we’ll see a suit coming up between every “New York Pizza” business.
Find Booker’s entire press release at http://www.spl-law.com/blog/
Michael Santucci is Booker’s representation.
Thanks for reading and commenting on my blog post, Lenny.
I appreciate your filling-in the facts for me! I somehow overlooked that MAMA MARLEY was co-owned by Bob Marley’s mom. Cedella Marley is listed on the MAMA MARLEY trademark application, but I didn’t realize what her relationship was to Bob Marley, as she’s not listed as a defendant in the complaint, only “Richard Booker, Bob Marley Movement of Jah People, and the Bob Marley Heritage Foundation are defendants in the lawsuit. The MAMA MARLEY application expressly states, “The name “MAMA MARLEY” does not identify a living individual,” so it would be very difficult for Booker and Cedella to claim it identifies Cedella at this stage in the game. Perhaps they would have been better off filing a name portrait consent () from Cedlla at the outset. I don’t know what reason they had for not doing so if it truly identifies her and she has consented to use of her name in the mark.
According to the lawsuit, NineMile refers to “a region in Jamaica where Bob Marley is buried and is well-known for that association with Bob Marley.” While the USPTO will not register geographically descriptive terms unless the brand owner can prove that the mark has acquired secondary meaning (brand recognition), in this case, I doubt that enough people know what/where NineMile is for it to rise to the level of geographic descriptiveness or geographic misdescriptiveness for any events happening in other parts of the world (See http://1.usa.gov/rSifon). Note, geographically descriptive marks differ from geographic indicators ().
You asked, “how much of a claim can they have to a geographical location as being ‘theirs?’ It depends, of course, and not just because that’s every lawyers favorite answer! Essentially, it depends on whether consumers would be likely to associate the name of the place with the place and whether that would effect their purchasing decision. As I stated above, I don’t know that most consumers that NineMile indicates the place where Bob Marley is buried and/or grew up. Thus, that moniker is not likely to rise to geographic descriptiveness for events held there or geographic misdescriptiveness for events held elsewhere.
I hope you will continue to read, enjoy and engage with Brand Geek.
“The MAMA MARLEY application expressly states, “The name “MAMA MARLEY” does not identify a living individual,””
Cedella passed away nearly four years ago, also might explain why she’s not listed as a defendant 😉
And you have to also consider this TM for its purposes targeting Jamaican peoples and aficionados of Jamaican reggae music. You feel that most people would not know what Nine Mile is, or who Cedella Marley-Booker is, but these peoples and places are intrinsic knowledge for Jamaican people. Most Western news agencies report the story in terms of their perspective, but if you read many of the Jamaican website reports–and the people’s comments–they side very strongly with Mr. Booker.
Rita had years and years to make these moves, but never did while Cedella was alive and associated with the businesses. The festival has gone on for almost 20 years, with many of the Marley children patronizing and performing at the venue. Booker is being targeted because of his name, not because of any real undue justice against Bob Marley or his legacy.
But, great blog, I’m extremely appreciative you’d take the time to engage in positive discussion on the subject
Thanks, Lenny; you make some great points and I appreciate your compliments on my blog! I hope you will continue to enjoy it (and the soon-to-be-released BrandGeek Geekview YouTube video, look for it towards the end of the year).
Trademark applications aside (since they cannot be directly challenged before the end of the trademark examination process), I think Rita Marley will have a hard time overcoming her delay in bringing this action infringement and right of publicity claims. Who knows if the case will get far enough for us to see (though this time, I imagine it might).
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