Monthly Archives: October 2013

Are You Sirius?

As readers of this blog will recall, aging rockers Flo & Eddie filed three separate lawsuits alleging that Sirius XM has infringed certain state- or common law copyrights of a class of owners of sound recordings fixed prior to 1972. Sirius XM has filed a motion to transfer the California case, which was transferred from state to federal court, and the Florida case to the Southern District of New York.  While this legal maneuver is relatively uninteresting, the motion does indicate at least one defense that is likely to feature prominently in this and the related case filed by the so-called “major” record companies, – titled Capitol Records, LLC et al. v. Sirius XM Radio Inc., No. BC520981 – in California state court raising similar issues: laches.

Laches, an equitable defense based on the doctrine of estoppel, is the unreasonable delay in pursuing a right or claim that prejudices the opposing party.  According to Sirius XM’s motion,

Plaintiff apparently has become aggrieved by the distinction drawn by Congress in withholding copyright protection from its Pre-1972 Recordings; thus now, after decades of inaction while a wide variety of music users, including radio and television broadcasters, bars, restaurants and website operators, exploited those Pre-1972 Recordings countless millions of times without paying fees, it asserts a purported right under the law of various states to be compensated by Sirius XM for comparable unlicensed uses. Plaintiff’s multiple court filings constitute a form of lawsuit lottery in search of an elusive new state-law right that would radically overturn decades of settled practice.

The laches defense raises a number of interesting issues.  For example, since at least the late 1980s, almost all terrestrial radio stations have used digital copies stored on servers to originate performances; i.e., the days of “disc jockeys” spinning vinyl have been gone for decades.  Presumably, under Flo & Eddie’s complaint, these terrestrial radio broadcasters needed a license to make copies of Pre-72 recordings and, potentially, to perform them.

Terrestrial radio stations have been simulcasting performances over the internet for nearly 20 years, presumably implicating the right of performance by digital audio transmission that Flo & Eddie allege exist under certain state laws for Pre-72 recordings.  Has SoundExchange, which collects and distributes royalties under certain statutory licenses for the public performance of sound recordings by digital audio transmission, been collecting royalties from these terrestrial radio broadcasters and remitting such payments to Pre-72 artists?  Because federal copyright doesn’t apply to Pre-72 recordings, if SoundExchange were collecting such royalties it would owe the terrestrial radio simulcasters a refund. If SoundExchange hasn’t, why hasn’t Flo & Eddie sued terrestrial radio?

Flo & Eddie will undoubtedly respond that they had no way of knowing that they weren’t getting paid by Sirius XM until the most recent Copyright Royalty Board proceeding, at this pre-72 recordings were a significant issue.

[The allegations raised by SoundExchange against Sirius XM that Sirius XM was inappropriately deducting revenue from its royalty calculation to account for Pre-72 recordings are inapplicable in the context of a per-song royalty, where each Pre-72 recording can be identified and appropriately excluded from royalty calculations.  Per-song royalties have existed since at least 2008.]

The motion is here.

Wave Your (Black) Flag

When bands break up, it is common for former members to fight over who owns the name.  One of the founders of the famous punk band Black Flag recently sought to gain control of the band’s name by filing a trademark infringement action against several other former members who had begun performing as “Flag.”

In 1976, Gregory Ginn, Keith Morris and Gary McDaniel formed a band they called Black Flag.  Between 1979 and 1986, several people joined and/or left Black Flag, including Dennis Cadena, Bill Stevenson, and Henry Rollins.  Black Flag also a logo, consisting of four uneven black bars simulating a waving flag (“the Logo”), that ultimately became better known than the actual music of the band.

In July 2012, McDaniel and other former members (but not Rollins) decided to play shows as “Flag,” which they envisioned as a “Black Flag tribute band.”

Ginn also filed a motion for preliminary injunction, seeking to stop Flag from touring.  In a somewhat interesting twist, in denying Ginn’s motion, Judge Pergeson of the Central District of California found that the BLACK FLAG mark was generic and, therefore, unprotectible.

“Plaintiffs assert that both marks are extremely well known, but at some point, marks may “transcend their identifying purpose” and fall outside the protection of trademark law. … Several manufacturers, for example, appear to have been distributing unlicensed merchandise featuring the Logo since at least 2009, without any action from Plaintiffs. Indeed, a Japanese company’s registration of the Black Flag mark in 2008 elicited no response from Plaintiffs. Nor, in the years following the band’s dispersal in 1986, did Plaintiffs take any action to maintain the distinctiveness of the marks.”

The court went on to note that, even if Ginn had a protectable interest, he was unlikely to succeed on the likelihood of confusion prong of his trademark claim.  This was in part because of the way in which Flag promoted itself.  In its promotional materials, Flag advertisements included the following: “Featuring Original Members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton, Performing the Music of Black Flag.” Because it is impossible to convey to the public that Flag would be performing the music of Black Flag without using the name Black Flag, the court reasoned there was no likelihood that consumers would confuse Flag for Black Flag.  (“the inclusion of explanatory language clearly distinguishes the marks visually and aurally, and even more so in meaning. So encountered, Flag’s marks are not very similar to Plaintiff’s alleged marks, and it appears unlikely that consumers will confuse them.)

The denial is here: