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I recently has the pleasure and good fortune to be a panelist at Thomas Jefferson School of Law’s all-day entertainment law symposium: “From Deals to Disputes and Creators to Lawyers: Film, TV and Videogames in the Age of Remix”. The panel I participated in was called “TV Deals & Disputes: From Reality TV to Hot Litigation”. It was moderated by Judge Greg Mathis, host and star of the nationally syndicated “Judge Mathis” television show. I was very fortunate to share the panel duties with top-notch trial attorney John Shaeffer of Lathrup & Gage LLP in Los Angeles and Marisa Sommerville, an in-house attorney with American Idol Productions.

During my brief presentation, I posed what I thought were six of the most interesting legal questions about the television business I have dealt with in the past year and/or that I anticipate addressing in the coming year. They were:

#6: Copyright Termination: Are TV producers and studios at risk for losing control of some of their most valuable content?

#5: Defamation Claims: Do networks and producers have anything left to worry about in California as a result of California’s tough Anti-SLAPP statute which makes it harder than ever to successfully make a defamation claim?

#4: Copyright Infringement: Should TV content owners be utilizing the reverse-class-action strategies that have been employed by the adult entertainment industry in the last year to stop Internet piracy of TV shows fueled by bit-torrent technology?

#3: Theft of Idea Claims: Is the law changing in California to make it easier for creators of new show ideas to state legal claims for theft of their ideas based on breach of implied contract and breach of confidence theories?

#2: Can Reality TV Formats Be Protected By Trade Dress Law?

And my number 1 most interesting legal question for the TV industry:

#1: Reality TV Show Talent Contracts: Are they fair bargains or unconscionable over-reaching voidable contracts?

In the weeks to come I will try to summarize in future editions of this blog the lively discussions we had regarding these issues.

If you own a trademark – (and who in business these days doesn’t?) – or if you have an existing website, you may want to register for a non-resolving .XXX top-level domain to prevent adult content cyber-squatters from registering a pornographic version of your site (e.g., YourBrand.XXX). The purpose of this “non-resolving” type of domain name registration is to block third parties from hijacking your trademarks, brands and domain names for a porn website. Otherwise, adult entertainment website operators can now register any available domain name address with the .XXX top-level domain.

Starting on December 6, 2011 at 8:00 am PST the so-called “General Availability” registration period will open. These domains will be issued on a first come, first served basis. Once a brand owner registers its mark as a non-resolving .XXX domain, it will not appear on search engine results.

This blocking application can be filed whether or not you own a registered trademark. In other words, this tool can be used even if you only own an unregistered trademark or service mark.

Why is this happening? Because ICANN – the quasi-governmental agency in charge of the administration of domain names – has decided to create a so-called Internet “red-light” district for adult content. In doing so, adult content owners will be allowed to register a version of your brand or domain name as a .XXX domain name.

Domain Name Registrars will charge an annual fee of $101 to register a non-resolving .XXX domain address. This can save having to challenge potential cyber-squatters via an expensive lawsuit in court or through an online domain name dispute arbitration procedure known as a Uniform Domain Name Dispute Resolution Policy (“UDRP”) proceeding. A UDRP proceeding costs a minimum of $1,300 just in arbitration filing fees. Your legal fees for legal representation would be in addition to that.

As a relatively low-cost defensive measure, we highly recommend that our clients file a General Availability blocking application at 8:00AM PST on December 6, 2011. Alternatively, some approved Registrars are currently offering pre-registration services; these services are available now, cost the same amount, and place the responsibility of timely registration in the registrar’s hands.

If you need assistance with protecting your brand(s) from .XXX registration, please contact us at (760) 637-2400.

ONE WEEK LEFT TO TAKE PREVENTATIVE ACTION

If you are a trademark owner and your trademark is actually registered, you have eight days remaining to prevent adult content cybersquatters (for example, x-rated content owners) from registering a version of your trademark (e.g., yourbrand.xxx) without the hassle or cost of another domain name registration or conflict.

Why is this happening? Because ICANN – the quasi-governmental agency in charge of the administration of domain names – has decided to create a so-called Internet “red-light” district for adult content. In doing so, adult content owners will be allowed to register a version of your trademark or domain name as a .XXX domain name.

Active registered federal trademark holders (registered prior to September 2011) must submit their trademarked terms to ICM (the .XXX registry) before October 28th to forever block their brand from .XXX registration.

Domain Name Registrars will charge a non-refundable one-time fee between $200 and $300 to cover application processing. After October 28th TM owners would need challenge cyber squatters through the registry dispute resolution procedures, which may cost $1,500 or more.

Unregistered trademark owners concerned with the potential use of .XXX domains may apply to register their marks as non-resolving .xxx domains (inactive domains) during a so-called “General Availability Period”. During this later General Availability Period all .XXX domains will be allocated based on priority of submission. General Availability accredited registrars will start accepting applications at 16:00 UTC (8:00AM PST) on December 6, 2011 for .XXX domain names. This period will give companies who lacked prior qualifying rights under earlier periods an opportunity to protect their trademarks and domain names.

For more information about this short Sunrise B period, visit http://www.icmregistry.com/launch/sunrise-b/ or watch this informational video: http://www.youtube.com/embed/hIDKnDSaWqE

Conclusion: If you or any of your clients own a trademark, brand name, or domain name and you are concerned about the possibility of someone else registering the .XXX version of it, now is the time to act.

If you need assistance with protecting your trademarks from .XXX registration, please contact Branfman Law Group, P.C. at (760) 637-2400 or at dbranfman@branfman.com.

Many years ago The Rolling Stones wrote a tune called “Yesterday’s Papers”. The key line went something like this: “Who wants yesterday’s papers? Who wants yesterday’s news?”

When it comes to branding and trademarks, yesterday may not be that much of an impediment – at least not in Asia. Why? Because what is old in the west may be new in the east. Take for example the Aquascutum brand which was founded more than 150 years ago. The brand may have been popular in the ’50s and ’60s; but recently it hasn’t done that well in the west. Despite that, however, there are now dozens of Aquascutum stores operating in China and elsewhere in Asia.

This article explores this trend in greater detail.

160 bands and artists.  15 venues.   70 music industry panelists including the founder of mp3.com and mp3tunes.com Michael Robertson.  That is the SAN DIEGO MUSIC THING festival and conference which begins tomorrow Friday September 9th and runs through the early morning hours on Sunday.

Here is a link to the website for more info and tickets:  www.sandiegomusicthing.com

During the day on Friday and Saturday there will be non-stop panel discussions on various aspects of the music business – including our LAWYERS, GUNS &  MONEY legal panel from 10 am – noon on Saturday.  At night there will be music all over town at 15 different venues.  And the price for the whole event is a measly $45.  [And that's not a typo: $45].

Here are our recommendations:

1.  If you are a live music fan and/or interested in the music business, buy a ticket;

2.  If you’re not a fan or interested but KNOW someone who is (son, daughter, niece, nephew, neighbor), be a hero and buy them a ticket;

3.  If you would like to volunteer to help out, go to the website at www.sandiegomusicthing.com and sign up to volunteer.

SAN DIEGO MUSIC THING is a project of the non-profit San Diego Music Foundation whose mission is to enrich San Diego’s diverse and creative music community through music education for youth, professional development for current and emerging industry professionals, live performances for the San Diego public, and recognition for San Diego artists of exceptional merit or service.  In particular the Foundation uses the net proceeds from its events to provide guitars to our area’s young students.  Over its 20 year history, the Foundation has served over 20,000 K-8 students county-wide from Chula Vista to Fallbrook.

Back in “the good ol’ days”, Jack Kirby was one of the co-creators of such iconic comic book characters as The Incredible Hulk, Spider-Man and X-Men.  These characters have generated tens of millions of dollars in revenue over the last five decades from everything from comic books to movies to toys and collectibles.  And there is no end in sight.

Kirby passed away not quite twenty years ago, and recently his heirs exercise their right under U.S. copyright law to terminate the transfer to Marvel of his rights in some 45 characters.  [U.S. copyright law specifically gives authors and their heirs the right under certain circumstances to get a so-called "second bite of the apple"  by terminating copyright transfers that might have been made when the author was young, hungry and willing to give up what later became valuable rights for a pittance].

Marvel didn’t take kindly to the termination notices issues by the Kirby estate and fought back with a Federal Court lawsuit to determine whether or not the termination notices were valid and enforceable.  The key legal issue was whether Kirby’s work for Marvel was done on a “work-for-hire” basis and therefore NOT subject to termination under the law.  [A work-for-hire is one of the categories of works where the right of termination does not apply].

This week the Court in New York rendered its verdict:  Marvel wins and the Kirby estate loses.  In a well-written (regardless of which side of the case you support) 50 page legal opinion, the Judge detailed the history of the relationship between Kirby and Marvel and undertook a fairly detailed analysis of the facts and the applicable law on his way to rendering his opinion that Kirby’s work for Marvel was a work-for-hire and thus the transfer of rights was not subject to termination.

The Kirby estate has already announced that it will file an appeal to a federal appeals court.

Why is this case important?

1.  If you are interested in the history of some of the most famous comic book characters in history, the Court’s opinion is a treasure-trove of information.

2.  The case also details what should and shouldn’t be done both in terms of documenting the relationship between a creative working for an employer AND with respect to issuing copyright transfer termination notices.

3.  This opinion and the inevitable legal appeal will help to shed some light on the sometimes-difficult legal issue of what was a work-for-hire under the old Copyright Act of 1909 (effective until 1978) and the current Copyright Act.

Stay tuned for more developments.

When it comes to lawsuits and litigation, we’ve all heard the old sayings about “the lawsuit settled on the eve of trial” or “the lawsuit was settled on the courthouse steps”.  Well……this really is one of those cases that literally settled on the eve of trial.

Earlier this month we wrote about a copyright infringement lawsuit brought against Keenan, Shawn and Marlon Wayans by a former assistant who claimed the famous brothers stole the idea for a book called “101 Ways to Know You’re a Golddigger”.  The case was scheduled to go to trial on July 12th.  [Please see my July 9th blog entry for details about the lawsuit].   As fate would have it, the brothers and their former assistant literally settled the case on undisclosed terms the night before the trial was to begin.

So far the parties have been mum about the terms of the settlement.  But if we learn anything about the terms of the deal, we will be sure to let you know.

A copyright infringement lawsuit against three of the Wayans Brothers scheduled to go to trial later this month sheds some interesting light on not only these kinds of lawsuits in general, but the somewhat niche arena of lawsuits arising from the alleged theft of jokes or comedy material.  And it has the potential to be almost something of a law school laboratory on a variety of important and difficult copyright infringement issues.

It’s something of a well-known secret in comedy circles that stand-up comics have been known to “borrow” (steal?) material from one another – perhaps since the beginning of time – but this case may be one of the few that actually end up in court without being settled first.  This lawsuit pits Keenan, Shawn and Marlon Wayans against a former assistant of theirs named Jared Edwards who claims that they stole jokes of his for their book “101 Ways To Know You’re a Golddigger”.  Edwards claims he worked for the Wayans family for ten years and went to them with the idea for a book about women who prey on wealthy men with jokes like:  “You know you’re a golddigger when you know more about sports players’ stats than an ESPN analyst”.

This case has the potential to air a lot of difficult copyright issues such as whether Edwards the plaintiff can show that the Wayans brothers copied not just unprotectible ideas but legally protectable “expression”.  (This “idea/expression dichotomy has been plaguing plaintiffs, defendants, judges and juries for decades – if not longer – because sometimes it’s hard to tell when the unprotectible idea ends and the protectable expression begins).

The case will also delve into whether the Wayans Brothers (and their publisher?) went beyond mere copyright infringement but also breached an implied promise to pay him for the use of his ideas.  Until recently, most breach of an implied promise claims failed because the courts have typically ruled that either the plaintiff couldn’t state enough facts to support the claim or the implied promise claim was superseded by the copyright infringement claim and the plaintiff therefore had to sink or swim on his/her copyright claim.  But in recent years some courts have started to allow some plaintiffs to proceed with breach of an implied promise claim.

We can also expect these legal issues to be decided during this case:

1. Whether Edwards’ claim is barred because he was an employee of the Wayans brothers and therefore any jokes he may have written and provided to them were a work-made-for-hire owned by the Wayans brothers;
2. Whether Edwards can’t claim exclusive ownership of the jokes, etc. because they were “joint works of authorship” with the Wayans brothers;
3. Whether Edwards’ claim is barred because he consented to having them used by the Wayans brothers;
4. Whether Edwards can’t make his claim now because he waited too long and allowed the statute of limitations to run;
5. Whether even if Edwards proves that the Wayans are liable to him the amount of money they owe him is severely limited to some percentage of the advance the Wayans’ received for writing the book (which wasn’t a best seller).

It is probably nothing less than a given these days that on multiple levels the Internet can be seen as both a blessing and a curse. One of those levels – the hijacking and pirating of copyrightable content and brands/trademarks – is perhaps amongst the most obvious. Trademark and brand owners and content owners like motion picture studios and record labels have tried a variety of techniques to cut down on Internet piracy – including filing lawsuits first against individual unauthorized downloaders and now against anywhere from 500 – 20,000 “John Does”. [Initially the "John Does" are only known by their Internet addresses - not their true names]. Those techniques have been less than overwhelmingly successful.

Now there are efforts afoot to create a new tool to try to stop counterfeiting, piracy and bootlegging: Senate Bill S 968 is designed to get online advertising networks, companies that process payments and search engines to shut off support for any website that is found by a court to be dedicated to copyright or trademark infringement. Here is a good short analysis of some of the pros and cons of Senate Bill S 968. It makes for very interesting reading.

The serialization of movies is really not a new phenomenon. If you are old enough – or enough of a film lover – you might remember the Charlie Chan, Andy Hardy and The Thin Man series of films. And let us not forget the 22 James Bond films that have been made since the early 60s. But with the recent success of the fifth film in the “Fast Furious” series and the upcoming release of the fourth film in the “Pirates of the Caribbean” series – as well as plans for more “X-Men”, “Twilight” and “Spy Kids” movies, it seems like the trend is turbo-charged for the 21st century. Here is a good article which examines the current trend in more detail. Needless to say, this trend does not bode all that well for independent filmmakers.