Lucasfilm sues to stop 'Skywalker' billboards

By Eriq Gardner

The galactic empire known as Lucasfilm has zeroed in on a threat in its airspace — an intruder with the audacity to hang big billboards in and around Chicago under the flagship "Skywalker Outdoor."

Lawyers for the George Lucas company are using a potent brand-zapping canon known as a trademark infringement lawsuit. In a complaint filed yesterday in Illinois District Court, Lucasfilm claims Skywalker Outdoor is improperly using its Skywalker mark in connection with a billboard advertising business, including displaying signage bearing the Skywalker mark promoting the company.

According to the complaint, Lucasfilm previously warned Skywalker Outdoor about misuse of the mark, and the company agreed in 2007 to stop using the name after a one-year grace period.

Steven Tyler threatens to sue if he's booted from Aerosmith

By Eriq Gardner

UPDATED: Steven Tyler still wants to be the lead singer of Aerosmith and has asked his lawyer to make it happen.

Skip Miller at L.A.'s Miller Barondess recently sent a letter to Aerosmith's management that demands the band cease any plans to replace Tyler as frontman, according to Billboard. In the letter, Miller writes, "We reserve all of our legal rights and remedies in this matter, including, without limitation, pursuing legal action for damages and other appropriate relief."

If Tyler goes to court over the band's name, he wouldn't be the first. Members of the Beach Boys spent seven years in litigation before finally reaching a settlement. Recently, the estate of '90s ska-punk band Sublime lead singer Bradley Nowell got an injunction preventing other members of the band from performing under the Sublime name.

Most of these claims are predicated on trademark grounds. A search at the USPTO's Web site reveals that the trademark rights to Aerosmith are held by Rag Doll Merchandising, Inc.  (likely a reference to the band's 1987 classic "Rag Doll").

Miller is calling for a meeting of Aerosmith's shareholders on Feb. 9 to discuss the band's future, including a new album and tour.

UPDATE: We're told that if Tyler sues, he'll focus on corporation issues rather than trademark claims.

AMC ambushes Obama billboard for 'Breaking Bad'

By Eriq Gardner

Ambush marketing has become so prevalent, we're now seeing ambush-ambush marketing. Consider the story behind AMC's recent ad promoting its "Breaking Bad" series.

In November, President Obama took a trip to China and was photographed sporting a Weatherproof jacket. The company decided to put up a billboard of Obama sporting the jacket in the center of Times Square in New York City.

 

Joe Walsh (famous guitarist) teaches Joe Walsh (Republican candidate) about copyright law

By Eriq Gardner

Another musician is claiming that a political candidate is tone deaf to the nation's intellectual property laws. And this one has an amusing twist.

Joe Walsh of the Eagles isn't happy that a Republican congressional candidate in Illinois has co-opted his song "Walk Away" and added silly new lyrics. The candidate's name? Also Joe Walsh.

Now Peter Paterno, the musician's LA-based lawyer, has sent a laugh-out-loud letter to the politician, demanding he cease using the song.

The letter begins by schooling politician Joe Walsh that it "might be beneficial" for him to learn a thing or two about the United States Copyright Act:

Sundance 2010: The movie no lawyer should see

By Matthew Belloni

Imagine a film clearance lawyer's absolute worst nightmare. We're betting it looks something like "Logorama," the Oscar-shortlisted animated short we saw Thursday on opening night of the Sundance Film Festival.

French filmmakers Francois Alaux, Herve de Crecy and Ludovic Houplain spent four years creating a violent, profane, action-packed caper set in a world comprised entirely of well-known corporate logos and iconic mascots. How familiar are the stars? An evil Ronald McDonald goes on a shooting spree on a street overflowing with 7-Elevens and U-Hauls and Wal-Marts and Pizza Huts. The Michelin Men are bumbling, foul-mouthed cops on his trail. Bob's Big Boy picks his nose and flings it on an unsuspecting victim. 

The entertaining 17-minute ride effectively satirizes the global corporate culture and our scary familiarity with the tools of pervasive marketing. But it got us thinking: why has no lawyer for any of the hundreds of copyrights and trademarks featured in the film tried to shut it down? After the screening, we asked two of the filmmakers if any brands had attempted to stop it.

"Not yet," they answered, a bit nervously. "We hope there's no CEO of McDonalds here tonight." 

It's an interesting legal question. The film is clearly satire, and a casual viewer can tell the brands are used to send up corporate oversaturation. But considering the millions of dollars invested in a character like Ronald McDonald, seeing him dropping f-bombs on a murderous rampage made us wonder whether the satire crossed over into disparagement. 

The movie's audience has been so small, it's probably not on the agenda in corporate boardrooms, but that could change if it wins the best animated short at the Academy Awards in March. Who knows, maybe the in-house lawyers will play along with the joke. The filmmakers said they heard from one brand exec who was just happy that his company's logo was featured prominently in the center of town. 

We're guessing that exec wasn't a lawyer.      

Summit wins injunction against 'Twilight' fanzine

By Eriq Gardner

A couple months ago, to the puzzlement of many, Summit Entertainment decided to go after a "Twilight" fanzine that used publicity photos from the film without permission.

Few people could figure out why the studio would file a copyright and trademark infringement lawsuit against Beckett Media when those stock photos are floating around the Internet and have undoubtedly been used by many. 

But Summit has been successful, winning a preliminary injunction against Beckett last week.

We went back and looked at the original complaint in this case. To us, the most interesting issue is the way that Summit tries to foreclose a free-speech, journalists-have-fair-use-rights line of defense. 

Summit alleges that Beckett got the photos by registering as a journalist on its publicity website. The Terms of Use for Summit's press site grant the right solely "for journalistic purposes," and don't allow those who download photos to "edit, alter or modify" the content without approval.

The issue of whether a fanzine is a journalistic enterprise or a commercial one is interesting. 

Beckett's main revenue source is selling trading cards. In its "Twilight" fanzine issues, the company included pullout posters and allegedly modified some of the photographs in question. Summit has its own officially sanctioned "Twilight" books, of course, and the Beckett 'zines presumably compete with the officially licensed stuff. 

 

Still, what magazine hasn't splashed photos of Rob Pattinson and Kristen Stewart all over their pages, and many publications make similar alterations and place photos in an unflattering context (we're reminded of the ongoing lawsuit by 186 indie rock musicians against Rolling Stone magazine for featuring them in a spread next to an advertisement for Camel cigarettes). In its answer to the original complaint, Beckett asserted some defenses that media organizations might rely upon in this situation, including the First Amendment.

Journalism or commercial speech? As the space between entertainment and news product collapses, we could see more of these types of lawsuits. Especially when content like photos are so easily passed around on the Internet.

Summit, repped by Jill Pietrini and a team from LA's Manatt firm, gave us this statement on the case: 

"Summit Entertainment acted to protect its rights in a situation which found Beckett Media using copyrighted and trademarked images and materials relating to the Twilight films for Beckett's financial gain without an agreement in place with Summit to legally license the right to produce materials based on its film franchise.  Beckett's sale of standalone magazines under the name Twilight, and wholesale use of Summit's copyrighted material in a commercial product, went well beyond the intended purpose of Summit's publicity site.  We applaud the court for its judgment in this matter."

Summit in rights battle over 'Letters to Juliet'

By Eriq Gardner

What would the Bard say about this lawsuit?

Summit Entertainment is tussling over rights to a movie that might best be described as "Julie & Julia" meets William Shakespeare.

The forthcoming film, "Letters to Juliet," focuses on a young American woman played by Amanda Seyfried who travels to Verona, Italy, to visit the real-life tombstone of Juliet Capulet, of "Romeo & Juliet" fame. In the city, Seyfried happens upon an old letter to Juliet dated 1951, tucked away in a forgotten corner near Juliet's gravestone. Seyfried's character is inspired to reply to the letterwriter on behalf of Juliet.

The film, which has already been shot by director Gary Winick ("Bride Wars") and is scheduled for a May release, is inspired by a non-fiction book of the same name, published in 2006 and optioned to Summit. The story shows how for the past 100 years, visitors to a Franciscan monastery in Verona have left letters to Juliet seeking love advice, and how a local group in Verona called the "Club di Giulietta" has taken it upon itself to answer these letters.

Sounds like an interesting premise for a film. But there's one problem.

Ergoarts, Inc., which produced Sundance special jury prize winner "Songcatcher," claims it has rights to the story after making a licensing agreement with the Club di Giulietta and its leader. Since 2006, Ergoarts has pursued first the book authors, and then Summit, demanding that "Letters to Juliet" be stopped.

Now Summit is asking a New York district court to declare that "Letters to Juliet" is legit, that it doesn't violate copyright, privacy rights, publicity rights, trademark, contract, nor does it tortiously interfere with any contractual relationship between ErgoArts and the Club di Giulietta.

Here's a copy of the best Victorian-themed intellectual property complaint since the missing Christopher Marlowe v. William Shakespeare.

UPDATE: Summit gave us this statement on the suit: "Summit Entertainment has taken proactive steps to protect its rights in regards to its upcoming feature film LETTERS TO JULIET.  The information provided in the filing accurately represents our position."

Rolling Stone loses Round One in T-shirt case

By Eriq Gardner

A California judge won't dismiss a lawsuit alleging that Rolling Stone magazine violated trademarks and rights of publicity by taking cover images of famous musicians and slapping them on t-shirts.

Live Nation, F.E.A. Merchandising, and Bravado International Group filed the complaint in California district court in October claiming Wenner Media was hawking products featuring Nirvana, Beyonce and other musicians. The plaintiffs, repped by Howard King and his firm, have exclusive licensing deals with the artists and allege unfair competition. 

Not surprisingly, Wenner asserted a First Amendment and fair use defense, saying the merchandise was expressive non-commercial speech part of a "subscription promotion campaign."

Judge Valerie Fairbank ruled yesterday that she needed to see more evidence in the case, including examples of merchandise not submitted by the defendants. The judge also rejected the argument that the lawsuit was inadequately pled.

Here's the ruling.

Rolling Stone also is in the midst of a battle with 185 indie rockers alleging misappropriation of likenesses for featuring a spread entitled "Indie Rock Universe" next to a four-page advertisement for Camel cigarettes.

Which came first, actress Ashley Madison or cheating-spouse website AshleyMadison.com?

By Eriq Gardner

Normally we wouldn't care too much about a cybersquatting claim by a minor actress named Ashley Madison, best known for a brief affair with James Woods and a role on "Entourage." But the countersuit in the case caught our eye.

Last week, Madison sued AshleyMadison.com, a dating website that proudly encourages married individuals to have an affair and has unsuccessfully attempted to advertise during the Super Bowl. (The site recently offered Tiger Woods $5 million to be a sponsor.)

Now the website has reportedly filed a $1 million countersuit against the actress for, ahem, cheating the website's trademark. The site alleges that the actress' real name is Ashley Madison Myrick and she only began using her "stage name" in 2005, three years after the website registered "Ashley Madison" with the U.S. Patent & Trademark Office. Here's the trademark registration. 

Since taking stage names is common in Hollywood, here's some free legal advice: Before changing a name, do a quick search at the USPTO's website.

Why hasn't Fox sued makers of Duff Beer? (UPDATED)

By Eriq Gardner

UPDATE BELOW

If boxing announcer Michael Buffer can sue a Texas radio station for infringing his catch-phrase, "Let's get ready to rumble," surely 20th Century Fox can go after a Mexican individual who has come out with a new version of Duff Beer.

Fox hasn't yet filed a claim against Tijuana-based Simpson's Brewing Company, makers of the new Duff Beer. But we imagine that it's only a matter of time. Fox reportedly once filed a trademark infringement lawsuit against a line of Duff beer in Australia in the late 1990s, and it's been aggressive in cracking down on knockoff "Simpsons" merchandise (although we once bought a remarkably lifelike yet certainly unlicensed Bart Simpson pinata in line at the Mexican border). 

A better question is this: Why hasn't Fox licensed any beverage maker to brew Duff Beer yet? Maybe Fox owner Rupert Murdoch is too busy saving the journalism business to realize there's lots of gold in a marketable Duff Beer product. Or perhaps the company doesn't want to send the message to its younger viewers that it supports unhealthy behavior like beer-drinking. As Homer Simpson once said, "To alcohol — the cause of...and solution to...all of life's problems."

UPDATE: We're not giving Murdoch's lawyers enough credit. We hear Fox has initiated Duff Beer-related legal actions in at least four countries:

In Spain there is a lawsuit pending against a local distributor called Duff Europe-Asia with a trial date set for early 2010.

In Belgium, a suit is pending against a European brewery that was manufacturing Duff Beer.

In Argentina, Fox got a preliminary injunction against local distributors and is moving forward with the lawsuit.

And in Mexico, there is a preliminary injunction in place against a man named Jesus Diaz (and a seizure of offending product was apparently carried out late last week). That's not the same person as Rodrigo Contreras, the Duff brewer in the Financial Times story that prompted this post, but we imagine Murdoch's forces will soon descend on him as well.