Scène à Faire from an Italian Restaurant

By Geoffrey Gerber
Billy Joel played St. Louis in concert last week. As I dropped one of my kids off at school, the DJ on that station played a Weird Al Yankovic parody called "It's Still Billy Joel to Me." I thought nothing of it until the DJ stated he was playing a bootleg copy because Billy Joel refused to give his permission for the parody. Who needs permission for parody?

According to the world's leading treatise on legal issues -- Wikipedia -- parody is an allowed fair use and the artist does not need to get permission. "However, as a personal rule, and as a means of maintaining good relationships within the music community, Yankovic has always requested permission from the original artist before recording his parodies."

So without permission, although Yankovic has apparently performed "It's Still Billy Joel to Me" in concert, he has not recorded the song for release. If that is the case, who is getting the royalty when a DJ plays the "bootleg" performance?

And . . .  because "you can't copyright a name," there are other "It's Still Billy Joel to Me," parodies out there.

It is a little unclear to me how much Weird Al's personal code of conduct requiring permission is driven by his desire to maintain good relationships and how much it is driven by record company concerns. Some of the problems in getting permission over the years appear to have involved differences of opinion between artists and their labels.

When it is not a produced song on one of his albums, Weird Al doesn't shy away from throwing a punch or two. When Eminem refused permission for Weird Al to parody the Eminem music video "Lose Yourself" after previously giving permission for an audio parody called "Couch Potato, " Weird Al pieced together an "interview" he did with Eminem in which he explored the rapper's views on the First Amendment. This is probably more interesting than the song parody itself.

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Fair Use of Presidential Debates, please.

By Pete Salsich III

Professor Lessig (and a long list of other prominent people) are calling on the Republicans and the Democrats to eliminate unnecessary regulation of political speech, particularly when it comes to Presidential debates.  Lessig talks about the increasing uncertainty surrounding the application of copyright laws -- and the confines of the "fair use" defense -- to internet-based forums such as YouTube, and the potential temptation for some politicians to use copyright law as a club to block critical commentary. 

While some might view this as simply an extension of Lessig's well known views in favor of less restrictive copyright laws in general, I think his key point is right here:

"I am confident that I won’t like much of what this freedom will engender. But if that were a legitimate reason to regulate political speech, this would be a very different world. We should all, regardless of our political persuasion, be encouraging a wide ranging debate about our political future. And we all need to hear more from those with whom we disagree."

I could not agree more, especially in today's world.  Read the whole post and consider adding your voice by contacting the RNC and the DNC directly.

Copyrights and Music Downloads: Selling or Licensing?

By Pete Salsich III

Confused or conflicted about copyrights and music downloads and the RIAA's aggressive practice of suing its customers?  Me too.  In fact, I don't know how many times this has happened to me:  I'm talking with someone (old friend or brand new acquaintance, it doesn't matter) and it comes up that I am an attorney with a copyright and entertainment practice, and the other person says some version of  either "I can't believe the record companies are suing their customers over music downloads" or "I can't believe people think it's OK to just steal music", etc., etc.  I usually just make a serious face and say "well, of course it depends on several factors, and lawyerblah, lawyerblah, lawyerblah . . . "

I found this post today and I think it neatly sums up the two camps on this issue, and even offers a "modest proposal" for a future "annual license" model as a way to resolve the issue.  It's very interesting reading -- well written and thoughtful (along with the comments and internal links).  I'm not sure it would work, but it's an example of the kind of creative thinking that becomes necessary when new technology stretches the limits of old legal models.

Sponsored Links and Metatags: The Trademark Wars, Round 10

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In the strange new world of sponsored links and metatags, when does a "use of a trademark" qualify as a "trademark use."  Or, more precisely, where does a "use of a trademark" qualify as a 'trademark use"?  Not in New York, yes in New Jersey, Illinois and Minnesota.  And now yes, at least tentatively, in California. In Google Inc. v. American Blind & Wallpaper Factory, Inc., U.S. District Judge Jeremy Fogel of the Northern District of California confronted the "use" issue when Google moved for summary judgment seeking dismissal of American Blinds' trademark infringement claim, which arose out of Google's AdWords program,  Under that program, Google sold American Blinds' trademarks as keywords to competitors.  As a result, when a user typed in a search for "american blinds,"  that search term triggered a "sponsored link" to a competitor on Google's search results pages. But because the American Blinds trademark would not appear in the sponsored link or, for that matter, anywhere in the search results other than in connection with legal references to American Blinds products, the question was whether Google's use of the trademarks was in fact a trademark "use" under the Lanham Act.

The question is hardly academic, since a "use in commerce" is a jurisdictional prerequisite under the Lanham Act. And it is hardly a settled question, as Judge Fogel's opinion makes clear.

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We Are All Dilutional: Fair Use and the Dilution Act

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One way to distinguish trademark infringement from trademark dilution is to realize that we are all dilutional. Virtually every day. At home, at work, and at play. Indeed, the life would be sucked out of our popular culture -- and our daily discourse -- without our First Amendment right to dilute like crazy.

The bedrock of trademark law is protection of the public. We give trademark owners enforcement powers to help protect consumers from being misled by infringers.  But the bedrock of trademark dilution law is private property. Under dilution laws, we give trademark owners enforcement powers to help them protect the distinctiveness of their property from being eroded by others. Consumer confusion is not a concern in dilution cases.

This significant move from protecting consumers to protecting property rights, especially when famous marks are involved, creates significant First Amendment concerns—so much so that Congress created a safe harbor for “non-commercial use” of a famous mark, which courts have interpreted to include parody, satire and editorial commentary. Mattel, Inc. v. MCA Records, Inc. 296 F. 3d 894 (9th Cir. 2002).

But that safe harbor merely allows companies to engage in what the rest of do all the time, which is use famous trademarks in noncommercial ways that may blur or tarnish those marks. Who hasn’t used the Walt Disney Company’s most precious trademark derisively to label an incompetent organization “a Mickey Mouse operation”? A Type A boss and his lackey get labeled, behind their backs, as “Batman and Robin.” That too perfect couple are, of course, “Ken and Barbie.”

Indeed, as Judge Kozinski explained in Mattel, supra, 296 F.3d at 900, "Some trademarks enter our public discourse and become an integral part of our vocabulary. How else do you say that something's 'the Rolls Royce of its class'? What else is a quick fix, but a Band-Aid? . . . Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions.  Once imbued with such expressive value, the trademark becomes a work in our language and assumes a role outside the bounds of trademark law."

From “Wonder Bread” to “Wonder Woman,” we use famous marks in quintessentially dilutional ways, i.e., to describe goods and services unrelated to the marks. Whether it’s Irving Berlin originally, or Gene Wilder and Peter Boyle later in Young Frankenstein, the hotel's famous mark is used in the song “Putting on the Ritz.” More recently, two famous DC Comics marks served the rock group 3 Doors Down, whose hit song "Kryptonite" asks “will you still call me Superman?”

So feel free to look for Mr. Goodbar® or point out the Stealth® political candidate or get misty over  that Hallmark Cards® moment or mock the McMansion (with the Lawyer Foyer) going up in the next suburb. And rest assured that the Federal Trademark Dilution Act allows you snuggle up with that special someone known to you as Miss America® or Mr. Universe®.  But please, please avoid my high school basketball coach's favorite joke, which was to tell us that he was wearing his Burger King pants.  Why Burger King? Because, he explained, they were The Home of the Big Whopper®.

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