Hulk Hogan Right to Privacy – Gawker

Hulk Hogan, real name Terry Bollea, the famed professional wrestler, has won a verdict against the media website Gawker for $115 million in a Florida Court.  The case was based on Mr. Bollea’s right to privacy.  Gawker had published a sex tape video of Mr. Bollea, which it claimed had constitutional protection.  Mr. Bollea was awarded $55 Million in economic damages and $60 Million for emotional distress.  There is also the potential for punitive damages.  Mr. Bollea was originally only asking for $100 million.

Gawker is the owner of other websites, including Gizmodo, Lifehacker, Deadspin, Kotaku, Jezebel, and JalopnikThe lawyers for Gawker argued that the sex tape was newsworthy and protected under the First Amendment, while the lawyers for Mr. Bollea argued that the sex tape was an invasion of privacy and had no news value.  The lawyers for Gawker claimed that since Bollea spoke publicly about his sex life, the tape was fair game.  According to Michael Sullivan, a lawyer for Gawker, “He has chosen to seek the spotlight,” and “He has consistently chosen to put his private life out there.”  He added that looking into the details of celebrity is what journalist do, regardless of whether the details are less than savory.  Editors for Gawkers claimed that it was relevant commentary concerning celebrity sex tapes.

It is likely that Gawker will appeal the decision. Gawker’s founder, Nick Denton, stated “We feel very positive about the appeal that we have already begun preparing, as we expect to win this case ultimately.”  Gawker Media stated “We’re disappointed the jury was unable to see key evidence and hear testimony from the most important witness… Hulk Hogan’s best friend Bubba the Love Sponge—who made the tape and offered up his wife in the first place—originally told his radio listeners that Hulk Hogan knew he was being taped. The jury was only able to hear a questionable version of events. Bubba should have been required to appear in court and explain what really happened.”  There is a question of whether Gawker can financially survive the award, even if they appeal.  If there is an appeal there will be an initial bond of at least $50 million, though the lawyers can argue to have this lowered.

According to Samantha Barbas, a law professor at the University at Buffalo who focuses on these issues,  “For a jury to say that a celebrity has a right to privacy that outweighs the public’s ‘right to know,’ and that a celebrity sex tape is not newsworthy, represents a real shift in American free press law.”

ASCAP and Copyright Laws – Music for Restaurants

The American Society of Composers, Authors and Publishers (ASCAP0 is a national organization of songwriters, lyricists, music publishers and composers which recoups royalties for artists from businesses using copyrighted works in their establishments.  It is one of the main performing rights organizations in the United States and throughout the world.

Many restaurants are not aware that they cannot merely play the radio in their establishments.  In fact, they need to obtain licenses from ASCAP, or from another performing rights organization such as BMI, and pay for these.  If they fail to pay for a license, the restaurant, or any other business, can be liable for damages under Federal Copyright law.  The requirement to obtain a license also applies to music played on websites, general businesses, yoga studios, karaoke, churches and television.

The Copyright Act of 1976, 17 U.S.C. § 101 et. seq., provides copyright protection for “original works of authorship fixed in any tangible medium of expression.” Such protection is not extended to ideas or facts upon which the expression is based. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

Under the Copyright Act, copyright owners have the exclusive right to, and to authorize others to: (1) reproduce the copyrighted work in copies; (2) prepare derivative works based upon the copyrighted work; (3) distribute copies of the copyrighted work to the public by sale or other transfer of ownership; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, display the copyrighted work publicly; and (6) in the case of sound recordings, perform the copyrighted work publicly by means of a digital audio transmission. To ‘perform’ a work means to recite, render, play, dance, or act it, either directly or by means of any device or process.

Failure to pay a company such as ASCAP for a license to use music in an establishment can result in a cease and desist letter from the organization demanding payment for a license, which can include attorney fees.  If the demand is not heeded, ASCAP has been known to file Federal Copyright Lawsuits against establishments which can be quite costly.

Damages for such Copyright infringement can include actual damages, statutory damages of up to $30,000 per song, or up to $150,000 per song if the use was “willful” or knowing that it was in violation of copyright law, the infringers profits, attorney fees, and costs.  The costs of a license from a company such as ASCAP, BMI or SESAC is significantly lower given the potential damages to a business establishment.

According to Jackson Wagener, ASCAP’s vice president for business and legal affairs, most cases are settled quickly, however “there comes a time where you’ve made so many efforts and the place refuses to get a license”, “at that point we take the unusual step of filing litigation.”

Music writers often rely solely on the royalties they receive from performing rights organizations.  The royalties received from establishments by ASCAP, BMI and SESAC go to these artists to pay them for the use of their copyrighted works.





Post-It Note Lawsuit

3M, the maker of the Post-It Note used in officers around the world has been sued, again, by an investor claiming to have first invented the product.  Alan Amron claims to have invented the “Press-on Memo” in 1973, one year before 3M inventors allegedly created the Post-It Note.  Mr. Amron sued 3M in 1997 claiming that he was the inventor of the product and the parties entered into a settlement agreement which he claims covered only $12,000 of his legal fees.  Mr. Amron is now suing in Fort Lauderdale, Florida Federal Court for $400 million claiming that 3M breached its prior settlement agreement with him by failing to give him credit for inventing the product.

According to a 3M company spokeswoman “3M developed Post-it Notes without any input or inspiration from Mr. Amron and it is false and misleading for him to state or suggest that he created, invented, or had any role in the product’s development.”  Mr. Amron does not see it this way and claims that “I just want them to admit that I am the inventor and that they will stop saying that they are the inventor.”  Mr. Amron claims that by 3M taking credit they damaging his reputation and defaming him.

Mr. Amron’s lawsuit in the Southern District of Florida survived a motion to dismiss by 3M and the parties have been ordered to mediation.  By surviving the motion to dismiss it would seem that Mr. Amron is not brining the same claims he brought in 1997, but has raised new claims based on the breach of the settlement agreement.

USPTO Suspends Action on Scandalous Trademarks

On March 10, 2016, the United States Patent and Trademark Office (“USPTO”) released a new Examiner guideline instructing that examination of marks subject to refusal under Section 2(a) of the Lanham Act for scandalousness and disparagement will be suspended.  The examination of such marks is halted pending federal litigation concerning marks that are considered scandalous and disparaging such as the Washington Rediskins trademark.

Section 2(a) of the Lanham Act currently prohibits registration of trademark(s) which:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;…”

There has been much controversy lately concerning whether this prohibition is constitutional under the First Amendment.  Recently the Federal Circuit ruled in the case of In re Tam that this section of the Lanham Act is an unconstitutional ban on First Amendment rights.  In that case, a rock band of Asian decent attempted to register the name of their band, “The Slants”.  Judge Moore in the case held that the law denies rights to certain viewpoints.  By preventing them from using scandalous trademarks the holders of those marks are losing important protections.  Judge Moore stated “if the government could deny a benefit to a person because of his constitutionally protected speech or associations, his exercise of those freedoms would in effect be penalized and inhibited.  This would allow the government to produce a result which it could not command directly.”  He went on “denial of [registered trademark] benefits creates serious disincentive to adopt a mark which the government may deem offensive or disparaging”.

The Court also rejected the governments view point argument stating that while the government would allow the registration of marks which refer positively to a group, it is attempting to regulate negative viewpoints in a different way.

The government went on to argue that registration of scandalous marks was commercial speech and entitled to less protection.  Rather than its commercial nature as a source identifier, it is the expressive character of the speech which the government is attempting to ban.

The government also argued that by registering a scandalous mark it was actually akin to government speech or government endorsement of the mark.  According to the Court, the only speech that is conveyed by the government is that the mark is registered and does no indicate anything with respect to the government authorizing or endorsing the speech.

The Court also stated that it could not allow the government to ban scandalous marks in the same way that it could not ban certain copyrights; and that the government cannot ban disparaging marks on the basis that is does not wish to be associated with those marks; and that the government does not have a compelling interest in banning disparaging marks.

This, and other cases, could be headed to the Supreme Court of the United States. In the meantime, however, the USPTO will suspend any actions on such alleged scandalous or disparaging marks.

US against German MERCK Trademark Lawsuit

The United States company Merck & Co. has sued German company Merck KGaA in United States District Court in New Jersey for unfair competition, false advertising, cybersquatting, trademark dilution and breach of contract.  While the U.S. company has been a separate entity since 1919, the companies were originally founded by the same family.

According tot he American Merck & Co. “KGaA’s unauthorized uses are likely to cause confusion or mistake with the MERCK Marks and Trade Names, or to deceive as to source, affiliation, connection, association, or sponsorship of Defendant with Merck,”

In the 1950s and 1970s the companies entered into coexistence agreements which delineated how each company would be allowed to use the MERCK name in various jurisdictions.  Merck KGaA was to use the Merck name in the United States under only the format of “E. Merck” or “E. Merck, Darnstadt, Germany”.  All of the letters were to be of equal prominence in an attempt to distinguish the name from the United States MERCK name.

The lawsuit states that Merck KGaA began more actively marketing their cancer drugs in the United States, a field in which Merck & Co. directly competes.  Merck & Co. alleges that Merck KGaA has begun using the MERCK name without the limitations contained in the coexistence agreements thereby leading to consumer confusion in the U.S. market.

The lawsuit alleges that the German company has begun referring to the American company as its “little brother” and “the original” suggesting an affiliation with the American company, leading to confusion or the likelihood of confusion in the marketplace.  The companies have been separate entities for nearly 100 years.

According to the CEO of the German company, Karl-Ludwig Kley,  “The fact is that over many decades we underinvested in our brand,” Kley told the paper. “We need to make people more aware of the fact there are two Mercks.”

The German company recently won a lawsuit in the English High Court against the American company based on the coexistence agreement entered into in the 1970s.  There was also a lawsuit in the Paris Court of First Instance in which Merck KGaA won some of its claims for trademark infringement against the American Merck.

In the English case, the American company stated “We are disappointed with the ruling of the High Court of Justice, London, which decided in favor of Merck KGaA, Darmstadt, Germany, regarding their claims in connection with the use of “Merck” in particular on web sites and social media. This decision reflects one step in a litigation process taking place in a number of countries, and will be appealed.”