Clean Slate, which plaintiff Fortres manufactures and secured a federal trademark for in 2001, protects the security of a computer by erasing all evidence of user activity so others who follow on a device can’t see it.

This case arises in references to a fictional computer program called “clean-slate” in Warner’s 2012 Batman film, in which Selina Kyle, the character who becomes Catwoman, tries to get her paws on software to scrub her criminal history from computer databases around the world.  The fictional software program is designed by “Rykin Data” and is referred to four times in the film.  Two websites – rykindata.com and rykindata.tumblr.com – were created to promote the film. Fortes sued Warner Brothers, asserting trademark infringement and unfair competition under the Lanham Act.  

The studio moved to dismiss the case, described by the court as a classic infringement claim involving “forward” confusion, in which “the junior user attempts to capitalize on the senior user’s good will and established reputation by suggesting that his product comes from the same source as does the senior user’s product.”

However here, Fortres puts forth a theory of “reverse” confusion, where the “large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user” such that “the public comes to assume that the senior user’s products are really the junior user’s or that the former has become somehow connected to the latter.”

The concept of reverse confusion is illustrated in Big O Tire Dealers Inc. v. Goodyear Tire & Rubber Co., where Goodyear Tire started selling a new radial tire under the trademark “Bigfoot,” when Big O Tire was already selling a tire under that name. Big O sued on a theory of reverse confusion and won a jury verdict, affirmed in the U.S. Court of Appeals for the Tenth Circuit.

In the current Indiana case, U.S. District Judge Philip Simon found that Fortres failed to state a claim for reverse confusion, saying: “I think the fatal flaw in Fortres Grand’s case has to do with correctly identifying the exact product that Warner Bros. has introduced to the market — a film, not a piece of software.”  Warner’s “clean slate” software only exists in the fictional world of Gotham; it does not exist in reality, therefore Fortres couldn’t argue that it had been damaged by Warner Bros.’ saturation of the market with its (fictional) “clean slate software.”  Instead Fortres argued it had been damaged by Warner’s saturation of the market with “its big-budget film and its promotional websites.”

Simon looked to cases such as Ocean Bio-Chem Inc. v. Turner Network Television Inc., where the court found the proper comparison for a likelihood of confusion analysis was between “real” products offered by each side.  Here, the court found no consumer, reasonable or otherwise, could believe the fictional “clean slate” software in the movie emanates from, is sponsored by, or connected to Fortres because the fictional software does not exist in reality. And if consumer sought to buy the software mentioned in the film, that would be impossible because it doesn’t exist.  Similarly, the court found no consumer, reasonable or even unreasonable, would believe that The Dark Knight Rises itself is connected to Fortres because the plaintiff isn’t in the movie-making business.

Simon agreed with Warner’s claim that, even if there was potential consumer confusion, its work is protected by the First Amendment.  Citing Rogers v. Grimaldi, where plaintiff claimed that defendant’s film, Ginger and Fred, created the false impression that Ginger Rogers was associated with the work, the U.S. Court of Appeals for the Second Circuit found that First Amendment interests trumped trademark claims.  In this case, Warner Brothers has satisfied both prongs of the Rogers test, showing “artistic relevance” and that the film’s use of “clean slate” is not “explicitly misleading as to the source or the content of the work.”

Berg is a musician-songwriter who has written or co-written several songs for professional wrestling, including Badstreet USA, which he co-wrote with one of the defendants, Michael Seitz, aka Michael Hayes.  The song was played as “entrance music” for certain professional wrestlers, including Seitz.

In 1983 Berg registered this song with Broadcast Music Inc. to collect licensing fees and administer his royalties, while still retaining his publishing rights.

This controversy arose out of THQ, a video game company, seeking to use Badstreet in one of its games. THQ initially made an offer to Berg to license the song but then later notified him that records showed the song was owned by the WWE.

When he researched, Berg found that the song as well as eleven other protected works had been re-registered with BMI by the WWE, listing co-defendants Seitz or James Johnston as “songwriter/composer” and defendant Stephanie Music as publisher.  This resulted in the royalties from use of the works on the WWE’s cable station, DVDs and ringtones going to the defendants.

Berg sued for declaratory judgment of copyright ownership, infringement, contributory infringement, unfair competition, tortious interference with existing and potential business relationships, civil conspiracy and money had and received; WWE moved to dismiss, based on lack of personal jurisdiction, failure to properly state direct and contributory copyright infringement claims and preemption of the state law claims.

U.S. District Judge Jane Boyle found that the WWE was subject to personal jurisdiction in Texas, through the long-arm statute, by purposefully availing itself to the benefits and protections of the state through its minimum contacts. It knowingly marketed to the state and attributed $5.1 million of its net revenue to commerce in Texas.

The court held for Berg, allowing a claim for direct infringement, finding he: sufficiently alleged a valid copyright by naming each protected work; alleged registration; and that the facts at issue showed WWE access to the protected works, as well as a substantial similarity between protected and infringing work to prove an unauthorized copying. The court dismissed the contributory claim because he failed to assert how the defendants induced, caused or materially contributed to infringing conduct by another.

WWE won a partial ruling in its favor on state claims, including tortious interference and unfair competition.  It argued that some of these were preempted by Berg’s federal copyright claims.  Applying a two-part preemption test, the court found the state claims within copyright because they pertained to his rights in the protected works and claims that defendants violated them; to the extent the claims were based on defendants’ reproduction or distribution of protected works, however, they were equivalent to a federal copyright, and, thus, preempted. Berg can proceed with the state claims in which he sought recovery based solely on defendants’ re-registration of his protected works and subsequent diversion of royalties from third parties. The court found these did had nothing to do with claims of WWE’s unauthorized use or reproduction of Berg’s copyrighted works.

The New York County Supreme Court has affirmed a lower court’s dismissal of a breach-of-contract lawsuit filed by the Duke Ellington heirs, in which they accused EMI Mills Music of cheating them out their fair share of overseas royalties due under a 1961 songwriting agreement.

That agreement, between the late jazz great and a group of music publishers in which EMI Mills Music is the predecessor in interest, specify that Ellington and his heirs are to be paid fifty percent of net revenue actually received by the publishers from foreign publication of his compositions.  The court describes this as a “net receipts” arrangement by which a composer, such as Ellington, would collect royalties based on income received by a publisher after the deduction of fees charged by foreign sub-publishers.

Plaintiff Paul Ellington, the composer’s grandson, points out in his complaint that when the agreement was executed, foreign sub-publishers typically were unaffiliated with domestic businesses such as Mills Music.  EMI Mills, like other publishers, since has acquired ownership of the foreign sub-publishers that generated the earlier agreed on sums.  By paying commissions to its affiliated foreign sub-publishers before remitting the bargained-for royalty payments to Ellington’s heirs, EMI essentially gets seventy-five percent of the royalties, while only paying the heirs twenty-five percent, the plaintiffs argued.

The courts rejected this view, declining to distinguish between affiliated and unaffiliated foreign sub-publishers because the contracting parties chose not to do so.  The appellate judges noted that the complaint sets forth no basis for plaintiff’s apparent premise that sub-publishers owned by EMI Mills should render their services for free, although independent sub-publishers presumably were compensated for identical services.

The court also dismissed the plaintiff’s argument that the agreement is ambiguous as to whether “net revenue actually received by the Second Party” entails revenue received from EMI Mills’s foreign sub-publisher affiliates. It found no ambiguity in the agreement, which, by its terms, requires EMI Mills to pay Ellington’s heirs fifty percent of the net revenue actually received from foreign publication of Ellington’s compositions.

Ellington, considered a legend in jazz and American music, wrote thousands of songs, many for stage and screen, for his acclaimed band, its noted soloists and for others. His popular hits including It Don’t Mean a Thing if It Ain’t Got That Swing, Sophisticated Lady, Mood Indigo, Take the ‘A’ Train and Satin Doll.

A Southwestern Law School alum has helped hammer from the bench some notorious practitioners of what the blogosphere calls copyright trolling — the so-called Prenda porn cases in which a group of lawyers bought up rights to some online blue works, then sought mass infringment claims against their online viewers, all in hopes of embarrassing them sufficiently to settle for small sums that started to rack up to a lucrative and nefarious enterprise.

U.S. District Judge  Otis Wright, a Southwestern alum, slammed the lawyers for their conduct in an order that fines them, says they will be referred to the appropriate bar groups for discipline, disbarrment and sanctions — and the key players in the case now will be subject to recommended criminal conspiracy probes by the FBI. The judge, by the way, displays a wry touch with his blistering order, (online copy courtesy of ArsTechnica) replete with Star Trek references and crafted in a way to maximize the sting against what His Honor clearly sees as lawyers who give a bad name to the profession. 

As reported by various media (see here and here), the Prenda ploy, as the judge details it, involved lawyers creating a shell company to buy up copyrights to porn, then filing a raft of individual court actions against its suddenly red-faced online viewers, who were offered the chance to settle infringement claims for $4,000 each. The naughty alleged offenders, identified by their IP addresses, thereby could avert public humiliation and potentially greater exposure to legal penalties for their asserted infringment.

But attorneys for Prenda Law were caught in a “blatant lie” about a manse-like home they asserted was owned by one of the parties they sued. They quickly sought to cover their tracks by dismissing the case but Wright had caught on to a con. “Plaintiffs,” he noted, “do have a right to assert their intellectual property rights, so long as they do it right … Copyright laws originally designed to compensate starving artists allow starving attorneys in this electronic media era to plunder the citizenry.”

The judge imposed $80,000 in fines against the Prenda lawyers — a sum he noted was large enough to sting but just under the threshold in cost-terms for appeal. The ton of bricks that should continue to fall on the lawyers, however, potentially will be much more painful, with Wright referring them to bar groups for professional action, as well as to the U.S. Attorney’s Office and the FBI.

Concerted efforts by authorities have shuttered previous legal maneuvers like those of Prenda, including in the Righthaven and related mass-filings and the Patrick Collins cases.

It’s a fiction based in fact: Yes, in Los Angeles, many waiters, taxi drivers, physicians, lawyers and others are wannabe authors of screenplays. The phones ring off the hook with daily calls from aspiring script writers trying to run down leads from every reporter in town who digs up, writes and gets published in some kind of fashion a decent human interest yarn. And the local court files are filled with true stories of disputes launched when an unknown slips her unsolicited manuscript in a weird setting to a Tinsletown mogul.

The law can be a jungle to navigate and Entertainment Law is its own gnarly beast. And too often writers and Hollywood creatives can find themselves on the wrong side of a cease-and-desist letter or a more serious legal claim, which entertainment lawyers must ride in to the rescue with tedious or expensive work to try to resolve.

So how  can Hollywood hopefuls stay one step ahead of a real legal or courtroom calamity? How about through some online advice from Mark Litwak, a seasoned, Beverly Hills Entertainment Lawyer who has provided legal services or represented producers on more than 100 feature films. On his blog  Entertainment Law Resources, Litwak has laid out useful tips to help artists avoid infringing on the rights of others. He touches on portraying fictional characters, using care about people who can be identified, defamation, invasion of privacy and their defenses.

A nifty, sample tip from him  about portraying fictional characters: “Give characters unusual names that no living individual would have. Check the phone book to see if any people with your character’s name reside at the location portrayed in your story. If there is a person in that community with the same name or a similar one, consider changing the locale or setting the story in a fictional locale. Add a disclaimer at the beginning of the film stating that any resemblance to persons living or dead is purely coincidental.”

Here’s a quick recap of the Internet streaming saga if you haven’t been following along:

In recent years, the broadcast television networks (i.e. Fox, ABC, CBS, NBC Universal) have fought in court to prevent services like Aereo from streaming what they assert is their protected television content over the net to paying subscribers without consent from copyright owners. On April 3, the U.S. Second Circuit Court of Appeals upheld a lower court decision denying the networks’ request for a preliminary injunction against Aereo’s service. Plaintiffs in that case since have filed a petition for a rehearing en banc. Meanwhile, the U.S. Ninth Circuit Court of Appeals is set to decide whether to uphold a lower court decision that granted plaintiffs’ request for preliminary injunction against a similar streaming service.

The jurisdictional split is pivotal: As a result of its Second Circuit victory, Aereo CEO Barry Diller announced that by May 15, the company would expand to Boston, located in the First Circuit, a jurisdiction that has yet to rule on the legality of the business’ operations. Clearly, the firm sought a declaratory judgment  so it has a legal shield  for its service in the First Circuit and beyond (see image above) before the broadcast networks file more of their own copyright infringement suits nationwide. Aereo said it filed its suit partly in response to statements by CBS executives, including some made via Twitter, that they would sue the business in every jurisdiction it expanded into:

The U.S. Sixth Circuit Court of Appeals has rejected legal moves under Federal Rule Civil Procedure 60(b) by the composer’s widow, Janyce Tilmon-Jones, to overturn default judgments in a copyright suit brought by Bridgeport Music and other assignees against a rapper and some recording labels for the unauthorized use of samples of Smart. Further, finding her litigation to be “frivolous and utterly without merit,” the appellate judges ordered Tilmon-Jones and her counsel to split Bridgeport’s damages and costs in the case, sums to be determined.

This case has some history: Tilmon, a member of the Detroit Emeralds, wrote his song in 1974, when it was registered with the U.S. Copyright Office. In 1976, he assigned rights to the song to Bridgeport Music, which in 1998 filed a second copyright application for it. In 1997, a trial court determined, rapper Rashaam A. Smith used an unauthorized sample of the tune in his work You and Me. An employee of Bridgeport Music, in 2004, sought a copyright renewal, asserting she was the authorized agent of Tilmon-Jones. And in 2005, Bridgeport, Southfield Music and Westbound Records obtained default judgements against Smith and associated record companies for the sampled use Tilmon’s song.

In 2006, Tilmon-Jones, individually and for the Tilmon estate, sued Bridgeport and its president, asserting a variety of contractual breaches, including discussion of matters involving Smart. The case was settled and resulted in dismissal with prejudice of all claims, a court order barring any future ones — and a signed release.

It was not until 2011, however, that Tilmon-Jones came along and said she had never authorized Bridgeport nor its employee to file the copyright renewal on her behalf for Smart.  That year Tilmon’s estate filed a renewal application for his song, which was granted, listing Tilmon-Jones and her two children as claimants to the copyright.

Then, Tilmon-Jones, as a nonparty to the lawsuit between Bridgeport et. al and Smith et. al., filed a motion under Federal Rule of Civil Procedure 60(b), requesting that the district court set aside the default judgments “because she, and not the plaintiffs, was the legal owner of the copyright at the time the lawsuit was filed.” The district court denied that motion and her motion for reconsideration. She appealed both rulings.

Did FRCP 60(b) apply to Tilmon-Jones? Rule 60(b) says Rule 60(b) “that a court may relieve a party or its legal representative from a final judgment under certain circumstances.” There are six ways for a court to accomplish this:  (1) mistake, inadvertence, surprise, or excusable neglect; (2) newly discovered evidence that, with reasonable diligence, could not have been discovered in time to move for a new trial under Rule 59(b); (3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party; (4) the judgment is void; (5) the judgment has been satisfied, released, or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or (6) any other reason that justifies relief. In this case, Tilmon-Jones sought relief under (4) , (5) and (6).

The appellate judges did not reach these contentions, finding more directly that Tilmon-Jones was a nonparty to the Bridgeport suit and therefore had zero claim for relief. Further, the court said her appeal lacked timeliness and was barred by the settlement she had reached in 2006.

“The conduct of Tilmon-Jones and her counsel was objectively and patently meritless and a waste of judicial resources,” the judges said. “Tilmon-Jones maintains that her appeal is not frivolous because the question of whether a non-party has standing under Fed. R. Civ. P. 60(b) was not obviously without merit. This may be true, but it does not obviate the fact that her appeal was utterly without merit because it was untimely and barred by a release. We find that this appeal is frivolous and that sanctions are appropriate.”

By the way, it might be appropriate to hear the Emeralds’ version of the song:

Just fyi, an important institutional announcement:

Susan Westerberg Prager, Executive Director and Chief Executive Officer of the Association of American Law Schools (AALS) and former dean of UCLA School of Law, has been named Dean and Chief Executive Officer of Southwestern Law School. Her five-year term will begin in Fall 2013. Already a trailblazer many times over, Prager will be the first woman to serve as dean in the law school’s 100+-year history.

In announcing the appointment, Board Chair Thomas Hoberman said, “The Board considered Dean Prager’s stellar credentials and outstanding national reputation in the legal academy and higher education, her pragmatic and inspired vision for our law school, and the extremely enthusiastic support voiced by members of the Southwestern community. We are delighted that Dean Prager will be joining us this Fall.”

Prager was selected by the Board following an extensive national search led by a committee of trustees, alumni, and faculty members. She will be the 11th dean of the law school, and succeeds Dean Bryant Garth, who stepped down in July 2012 after seven years in the post. Former Vice Dean Austen Parrish has served as Interim Dean since July 2012.

In accepting the appointment, Dean Prager said, “Southwestern is a remarkable place, with a rich tradition of making a difference in the futures of its students. The law school’s innovative and collaborative spirit is part of its DNA. The faculty and countless graduates are committed to helping today’s students contribute to the complex and challenging worlds they will occupy as professionals. I feel privileged to have been asked to lead Southwestern Law School at this challenging and exciting time in legal education.”

The search for Bryant Garth’s successor was chaired by Mike Downer ’81, Vice-Chair of the Southwestern Board of Trustees, and Senior Vice President, Secretary and Chief Legal Officer at Capital Research and Management Company. “Dean Prager has the experience, skills and vision needed to continue building on the terrific momentum Southwestern gained under Dean Garth,” Downer said. “We are thrilled that such a high-caliber individual will lead Southwestern into its second century.”

More? Read here.

Richard Nixon still was president and Gordon Liddy was just proposing a plan involving a Democratic office in a complex called Watergate. Don McLean (American Pie) and Michael Jackson (Ben) had hit tunes and HP introduced the first hand-held scientific calculator. The Godfather was fresh, HBO had just launched as a commercial cable network, lava lamps were hot and so were bell-bottoms for men. That was all so 1972.

But the New York State Supreme Court of Appeals has just brought that year back to the fore in its much awaited ruling favoring Universal Music Group over Escape Media group, owner of the music streaming service, Grooveshark. That decision underscores that timing is everything and tunes from the early Seventies and before may become a slam for operators of online services.

Universal’s original suit claimed copyright infringement by the music streaming site and a key legal issue became Grooveshark’s hosting of unlicensed music recorded before 1972. Before that year — when Bobby Fischer became a chess king and Hurricane Agnes an East Coast killer — there effectively was no “safe harbor” for later-developed online services.

The Digital Millenium Copyright Act, which took effect in 1998, provides protections for services like Grooveshark, YouTube and SoundCloud against copyright infringement claims on music recordings made after Feb. 15, 1972. If Congress had wanted to extend that shield even earlier, it would expressly have done so, the New York appellate court said.

Its closely watched decision effectively puts the burden on site owners to comb their databases to remove pre-1972 recordings or run the risk of being held liable for copyright infringement. The appellate ruling lifts the responsibility from copyright owners like Universal to issue take-down notices and they now can sue services on infringement claims without such notice.

John Rosenberg, attorney for Grooveshark — whose fiscal woes have become public via comments by its CEO — said his client would appeal, telling interviewers: “The court’s decision, if it stands, will significantly undermine the Safe Harbor protections of the Digital Millenium Copyright Act and may severely disrupt the operations of all Internet Service Providers who, like Groovehark, permit access to user-generated music content.”

Two years ago, McKelzey, of New Jersey, had what he thought was a legal video removed from”Werner von Wallenrod’s Humble Little Hip Hop Vids,” his self-created collection or channel of multimedia reviews of hip-hop albums, on YouTube. The company told him his work violated the site’s terms of use because it included material from Eric B. and Rakim’s album, Eric B. for President.

McKelzey was confused because he thought his review was defensible as a fair use. As the 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law says, his was an activity in which there were “quotation of excerpts in a review or criticism for purposes of illustration or comment.” He saw his work as akin to that of the late, Pulitzer Prize-winning critic Roger Ebert, who pioneered the practice of showing clips during his broadcast movie reviews.

But McKelzey’s video had been flagged by YouTube, and, further, a take-down notice, under the Digital Copyright Millennium Act, had been issued against it by Universal Music Group, owner of some of the masters by Eric B. and Rakim.

What this online critic learned, however, was there was a further complication: It seems that YouTube enters into agreements with specified music copyright owners to allow use of their sound recordings and musical compositions. That material gets special handling, as opposed to standard protections outlined for other creative content in the YouTube terms of use, Mashable reports, adding, “Under these contracts,  [YouTube] may be required to remove specific videos from the site, block specific videos in certain territories, or prevent specific videos from being reinstated after a counter notification.”

McKelzey got a second chance to get his contested material reconsidered when YouTube recently changed its Content ID system, allowing a user to appeal directly with the copyright holder as he did with Universal. No luck.

And worse: McKelzey is on rocky grounds with YouTube. He now has earned an infringement strike against him in its two-strike system so he runs the risk that he will be banned from the Internet’s largest online video service.

Could he have avoided these woes? Well, Entertainment Law practitioners dwell on the fine print in agreements, right? And it turns out that there’s posted language on the YouTube site describing its preferential handling of materials by those specified copyright owners with which it has cut deals.