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Week in Review

By Martha Nimmer

Trademark Trouble for Oprah

The Second Circuit doesn't seem to be a fan of Oprah, at least from a legal standpoint.

Late last week, the U.S. Court of Appeals for the Second Circuit ruled that Oprah Winfrey failed to prove that her use of the "Own Your Power" mark qualified as fair use. This decision reverses the lower court's ruling and revives the Lanham Act claim of Simone Kelly-Brown, owner of the motivational services company Own Your Power Communications Inc., against Winfrey, her company Harpo Productions Inc. and the Hearst Corporation, the publisher of O The Oprah Magazine.

In addition to hosting a motivational radio show, Brown writes a blog and organizes conferences and other events aimed at "owning" one's power. She registered the "own your power" mark in May 2008. While the registration was pending, Winfrey, Harpo Productions and Hearst Corporation tried to register a mark in a new venture, the Oprah Winfrey Network, or OWN. Two years later, the Winfrey defendants "launched a series of publications, events and online initiatives using the phrase "Own Your Power." For instance, states the complaint, "the Sept. 13, 2010, edition of O used the words "Own Your Power" followed by subheadings reading "How to Tap Into Our Inner Strength"; "Focus Your Energy"; and "Let Your Best Self Shine." Following the launch of these events and publications, Brown claims that she began to receive phone calls from people who were confused about her business and whether it was connected to Oprah Winfrey and her television network. Brown later filed suit in July 2011, but Southern District Judge Paul Crotty granted the defendants' motion to dismiss in 2012, stating that the use of the words "Own Your Power" constituted fair use. Undeterred, Brown appealed to the Second Circuit.

Judge Chester Straub, writing for the three-judge panel, concluded that the plaintiff had plausibly alleged that "Oprah was attempting to build a new segment of her media empire around the theme or catch phrase 'Own Your Power,' beginning in the October Issue and expanding out from there." Turning to the defendants' fair use argument, the court wrote that the defendants had failed to prove good faith, even going so far as to state that it was "implausible" that someone as famous as Oprah "would attempt to trade on the goodwill of someone relatively obscure like Kelly-Brown." Unconvinced, the court wrote, "We agree that these allegations do plausibly suggest that the defendants had knowledge of Kelly-Brown's mark, liked it, and decided to use it as their own. In other words, defendants' allegations that they did not intend to trade on Kelly-Brown's good will, even if true, do not preclude a finding of bad faith." This decision will thus clear the way for Brown's trademark lawsuit against Oprah and the other defendants.

In the meantime, it seems unlikely that the Second Circuit's ruling will make Oprah's Book Club.


En Garde!

The French appear ready to declare "defeat" in their efforts to crack down on digital media piracy.

Facing decreased media industry revenue, French lawmakers launched new efforts in 2009 aimed at fighting unauthorized file-sharing; this effort was touted by some as "the toughest anti-piracy law in the world." According to the New York Times, "repeat offenders who ignored two warnings to quit downloading movies or music illegally were confronted with the prospect of a suspension of their Internet connection." Now, however, it appears that French President Francoise Hollande is ready to give up, shutting down the agency created to enforce the new anti-piracy law put in place by his predecessor, Nicolas Sarkozy. Fleur Pellerin, the French minister in charge of Internet policy, essentially stated that the policy was unenforceable, likening Internet access to access to clean water: "Today, it's not possible to cut off Internet access," she said. "It's something like cutting off water."

Now, instead of cutting off Internet access, the French government may choose to impose a 60 Euro fine on Internet pirates. Some members of the government have even suggested doing away with the entire warning system and accompanying potential penalties. These same lawmakers, however, fail to offer other ideas for cracking down on France's media piracy problem, which, by all accounts, is getting worse. SNEP, a French recording company, said Friday that "industry revenue fell by 6.7 percent in the first quarter of the year. More alarmingly, revenue from digital outlets fell by 5.2 percent -- the first quarterly decline -- though the organization said several special factors played a role in this." At the same time, however, visits in France to illegal music sites grew by 7 percent in just two years.


Batter Up

It was only a matter of time until we heard more about the sale of the Dodgers. On Wednesday, a Los Angeles Superior Court judge ruled that the terms of the 2012 sale of the baseball team should be made public. Guggenheim Baseball Management purchased the team for, if rumors are to be believed, $2.15 billion. Readers will recall that the Dodgers were sold after team owner Frank McCourt reached a $131 million divorce settlement with his then-wife, Jamie. Following the sale of the team, the former Mrs. McCourt sued to void the settlement on the grounds that the team's value was "grossly undervalued" in the divorce proceedings.


BMI Battles with TMZ

Someone should probably tell TMZ what "exclusive" means.

On Wednesday, TMZ reported that Broadcast Music Inc. (BMI), one of the main organizations that collects public performance royalties on behalf of songwriters, composers and music publishers, had sued 12 bars and restaurants in the United States for the unauthorized use of its clients' musical works. Even though BMI sues numerous establishments across the country every year, TMZ thought that this case was special and decided to call its report "exclusive." Not shy about pushing the envelope, TMZ went further with its story and said that BMI would be to blame if "a bunch of small-town bars possibly get[] forced out of business for the capital offense of playing their songs." TMZ also reported that BMI "thinks it is entitled to $150,000 for every song played." Apparently, no one at TMZ is familiar with copyright law, which "theoretically allows successful plaintiffs to collect up to $150,000 per infringement." BMI, unsurprisingly, was unhappy with these remarks, and demanded a retraction, calling the TMZ story a misrepresentation.

TMZ should probably stick to taking unflattering photos of celebrities on the beach and leaving the legal interpretation alone.


Read the TMZ story here: http://www.tmz.com/2013/06/05/bmi-lawsuit-michael-jackson-lil-wayne-lady-gaga-rolling-stones-small-bars/

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This page contains a single entry from the blog posted on June 8, 2013 9:33 PM.

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