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Week in Review

By Martha Nimmer

"Girls" and Boys Settlement

Details have emerged regarding the March 16th settlement between '80s rock group the Beastie Boys and toymaker GoldieBlox. Readers will recall that GoldieBlox used the Beastie Boys' song "Girls" without permission in a YouTube video and then in a Super Bowl commercial that depicted girls building a Rube Goldberg-type machine. The details of the deal between the Beastie Boys and GoldieBlox came to light in an unrelated case between the music group and Monster Energy, which also used a Beastie Boys song without prior authorization.

The particulars of the settlement emerged as the "Beastie Boys' challenge against Monster Energy heads to trial in Manhattan over a video promoting the Ruckus in the Rockies 2012 snowboarding event." Last week, the presiding judge in the Monster Energy case said that the band could not testify about the GoldieBlox settlement. In his decision, U.S. District Judge Paul Engelmayer noted that the settlement "granted GoldieBlox a retroactive license to use the musical composition of 'Girls' between November 18, 2013 and November 28, 2013." Additionally, GolideBlox also agreed to make annual payments of 1% of its gross revenue, until the total payments amount to $1 million, to a charitable organization chosen by the Beastie Boys and approved by GoldieBlox; the settlement stipulated that the charitable organization must support "science, technology, engineering and/or mathematics education for girls." Another facet of the settlement, as noted by Judge Engelmayer, was that the parties "agreed to make certain, specifically worded public statements, and to keep the settlement agreement confidential, with certain exceptions, including its use in litigation."


A "Bit" of Good News

The Federal Election Commission (FEC) has just given the go-ahead for political candidates to begin accepting bitcoins as campaign donations. The FEC unanimously approved the measure last Thursday "in response to an advisory opinion request from the Make Your Laws Political Action Committee," a group that encourages voter participation in the lawmaking process. The FEC failed to reach a decision on a similar request made last year. The FEC also approved Make Your Laws' request to purchase bitcoins, on the condition that it "sells the virtual currency and converts it into dollars before depositing and spending it." In reaching its decision, the FEC emphasized the importance of "safeguards to obtain and report the identities of its donors, given the anonymous nature of bitcoin transactions."

Recently, bitcoins have become popular with political action committees and candidates. According to Roll Call, bitcoins have found strong support among Libertarian candidates, "who have forged ahead in collecting them even in the absence of approval or guidance from the FEC." Roll Call reports that Rep. Steve Stockman, a Texas Republican who lost a March primary challenge to current Texas Senator John Cornyn, and the Livingston County Libertarians in Michigan, have been collecting bitcoins.


Battle for the "Ball"

A trademark battle is unfolding between two unlikely foes, the company that manufactures Skee-Ball machines, and a Skee-Ball-themed bar in Brooklyn. In 2011, the maker of the 105 year-old game sued the owners of Full Circle, a bar located in Williamsburg, Brooklyn, claiming trademark infringement. Back in 2005, Full Circle's owners founded a "Brewskee-Ball" league as a way to attract customers and drum up business. Full Circle claims to have "hundreds of regular players in Brooklyn, San Francisco and Austin." The name "Skee-Ball," however, turns out to be a registered trademark, and the manufacturer of Skee-Ball machines maintains that the bar has no right to use the mark. Full Circle, in response, filed a countersuit, claiming that Skee-Ball is a generic term for the game, in which players roll a ball up a tilted lane, trying to make the ball bounce into various holes with different point values.

The manufacturer's lawsuit and the bar's countersuit ended up being consolidated in the Eastern District of New York in 2012. Apparently, the case had not progressed very much, at least not until Full Circle hired the big time IP firm of Fish & Richardson. "They came to us in part to get things moving," said Kristen McCallion, a firm partner. The case definitely appears to be "moving": just last week, McCallion and another Fish & Richardson partner, John Johnson, filed a petition with the Trademark Trial and Appeal Board (TTAB) to cancel Skee-Ball Inc.'s trademark registration. The TTAB review can take over a year, but the board will stay its decision while the case is pending in district court in New York.

The question remains, however, whether the Skee-Ball mark should remain protected or whether it has become generic. The bar's attorney argues that the mark is not protectable because "there's no other word to describe Skee-Ball. Under trademark law, if a noun identifies a common name for something and not a source, then it's not protected." Consequently, if Skee-Ball wants to maintain its trademark, it will need to show why the term has not become generic. Zipper and aspirin are just two examples of trademarks that became "genericized" in the United States, and Skee-Ball may be next.


Boycotting Basketball

The controversy over LA Clippers owner Donald Sterling continues to grow. In an interview with CNN's Anderson Cooper, Sterling said that he was "baited" into making a series of racist remarks to his now former girlfriend, V. Stiviano. Sterling did not stop there, however; he also inexplicably "doubled down on his criticism" of former NBA star Magic Johnson, calling the former Laker a "bad role model" because he "has AIDS" and has not done enough to help other minorities. (Johnson, it should be noted, has been HIV-positive since 1991, but his disease has not progressed to AIDS. After learning of his diagnosis, Johnson founded the Magic Johnson Foundation to help combat the spread of HIV, and has also started and helped bring businesses to under-served, urban areas).

After Sterling's latest remarks, Roger Mason, vice-president of the National Basketball Players Association (NBAPA), announced that several players were ready to strike next season if Sterling still owned the Clippers. "I was just in the locker room three or four days ago. LeBron and I talked about it," Mason said in an interview scheduled to air this Wednesday night. "He ain't playing if Sterling is still an owner." According to Mason, other NBA stars will also join the boycott if Sterling remains owner: "[w]e have player reps, we've got executive committee members ... Leaders of the teams, they're all saying the same thing, 'If this man is still in place, we ain't playing.'" Mason says that promise holds true even if Sterling's wife, Shelly, is the team owner: "[n]o Sterling deserves to be an owner of that franchise any longer," Mason remarked. "And I've gone down the line from LeBron to the other guys in the league that I've talked to and they all feel the same way. There's no place for that family in the NBA." Shelly Sterling has "vowed," however, to hold on to the team.

Although the ownership of the Clippers remains uncertain, it is clear that the Sterling saga is far from over.


With Friends Like These, Who Needs Friends?

An art collector has sued the former assistant and friend of famed American artist Jasper Johns in New York federal court, claiming that the assistant pilfered more than $6.5 million worth of art from Johns and then sold it under false pretenses. Plaintiff Frank Kolodny alleges that he paid Johns' assistant, James A. Meyer, $400,000 for a stolen work. The lawsuit also claims that Meyer took "nearly two dozen artworks by Jasper Johns" from the artist's studio, "and then, together and with the aid and assistance of the Dorfmans," also named as defendants in the suit, "sold to unsuspecting buyers, including plaintiff." According to the complaint, Mayer has already been indicted for these fraudulent sales.

The plaintiff's suit goes on to allege that the conspiracy between the Dorfmans and Mayer went on for over six years, resulting in the sale of over $6.5 million worth of Johns' art. To accomplish such a feat, the defendants allegedly represented to potential buyers that Meyer had received the artwork as a gift from Johns, even providing buyers with an affidavit from Meyer, notarized by Dorfman's wife. "Each affidavit falsely provided, among other things, that: (1) Meyer received the artwork directly from Jasper Johns; (2) Meyer is the rightful owner of the work and he has the right to sell it; (3) the work is recorded in Jasper Johns' archive; and (4) the work is authentic." As of a result of this fraud, Kolodny says that the work for which he paid $400,000 is now "unsaleable." Consequently, he is seeking the return of the purchase price paid for the work as well as damages for RICO fraud, common-law fraud and breach of warranty.


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This page contains a single entry from the blog posted on May 15, 2014 4:14 PM.

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