New Year, Same Lawsuits

As tempting as it is to say “new year, new lawsuits,” that’s only partially true.

Because while a slew of new suits will surely be filed in 2018, there are still plenty of pending cases that are worth watching even though they have yet to be decided.

One big theme in a number of pending cases is fashion. From shoes to jewels, there’s a suit, countersuit, or appeal coming up that could have big implications for other players in the fashion industry. And it’s no wonder: something so visually driven invites all kinds of trademark and design issues.

Here are a few cases we’re keeping an eye on this year.

  • Adidas sues Skechers… again.

Skechers is no stranger to lawsuits. In its 25 years of existence, the company has been taken to court more than once by both Nike and Adidas for knocking off their designs.

Chalk it up to Skechers’ “fast fashion” approach to doing business. Rather than spending a lot of money researching and developing innovations for their sneakers, Skechers takes a different tack. The company waits for the bigger shoemakers to test new shoe designs out first. Skechers then manufactures its own version of the shoes that are successful in the marketplace.

In spite of the numerous suits the company has had to defend against, the business model seems to be working for Skechers. The company surpassed Adidas to become the number-two selling athletic shoe company in the US in 2015.

Having entered into several settlement agreements since 1995, it seems that another could be on the horizon for these two parties. At the center of the dispute is Adidas’ “Springblade” technology which is intended to help propel runners forward.

The distinctive design was introduced in 2013. Skechers began offering its own modified version before Adidas received patents for the Springblade concept in 2016. Because of the timing, the court last summer found no willful infringement on behalf of Skechers and turned down Adidas’ request for a preliminary injunction.

The case was put on hold late last summer so the U.S. Patent and Trial Appeal Board could decide other issues related to the case. The trial is expected to move forward in April 2018—unless, of course, the parties settle (again).

  • Converse is trying to regain its rights in its trade dress.

For many shoppers, the Converse brand’s iconic shoe designs with a toe cap, bumper, striped midsole, and diamond-patterned soles have been around for more than their entire lives. The question is, when you see these elements on an athletic shoe, do you automatically think of Converse?

The company says yes, you probably do. With that in mind, Converse filed an infringement suit a few years ago against 31 entities including the likes of Walmart, New Balance, and other household names.

During the proceedings, the International Trade Commission (“ITC”) found that, aside from the patterned soles, the other elements at the heart of the suit weren’t protectable as trade dress. (Trade dress is a product’s overall appearance. Just as someone can have legal rights in a trademark, they can also have rights in trade dress.) This was a major victory for the defendants.

But Converse isn’t going away quietly. The Nike subsidiary is battling the ITC to have its design features recognized as protectable trade dress. Arguments are scheduled to be heard by the Federal Circuit appellate court in February.

Christian Louboutin (whose red-soled shoes enjoy legal protection) and Tiffany & Co. (whose “Tiffany blue” boxes are also protected) have filed amicus briefs for the court to consider. These are briefs submitted by nonparties who have an interest in the subject matter and want to provide additional, relevant information.

These companies argue that the ITC’s decision, if allowed to stand, sets a dangerous precedent that could upend trademark and trade dress law as we know it.

  • Speaking of Tiffany & Co., Costco is appealing the court’s verdict in favor of the jeweler.

Sound familiar? These parties have been embroiled in litigation for five years (though you wouldn’t be alone if you think it feels much longer).

Tiffany sued over Costco’s sale of what the retailer described as “Tiffany” diamond rings. Costco argued that the “Tiffany setting” is a generic description for a type of ring setting. While the argument has some validity, Costco’s display cases said “Tiffany” as a standalone term, which could be misleading as to the origin of the rings.

Tiffany prevailed, and the court last fall ordered Costco to pay $19.4 million. But the case isn’t closed because Costco appealed. The parties are due to meet in court again later this year. If Costco is successful in its appeal, the decision could loosen the rules regarding how you can describe your product.

But more than just the Tiffany suit, all three cases have the potential to have a big impact. We’re looking forward to seeing how they play out, and we’ll be sure to keep you posted about their outcomes could affect you.

Do you have any questions about a trademark, patent, or copyright matter? Our firm focuses on intellectual property and entertainment law and would be happy to discuss it with you. Contact us at (561) 953.9300 or visit us online at to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.


New Year, Same Lawsuits

The Slants’ Free Speech Victory Changes the Legal Landscape for Trademarks

It finally happened.

In Matal v. Tam, the Supreme Court handed down a long-awaited decision on a major trademark case, and opened the floodgates for a lot more trademarks to be registered.

In Matal, the defendant was the leader of an Asian-American band called The Slants. The word “slants” is a derogatory way to describe Asian-Americans. Yet Tam and his bandmates decided to re-appropriate the term, wearing it as a badge of pride.

There’s no question Tam and his bandmates can choose whatever name they want. However, while anyone can name their service or product freely, the chosen name may not necessarily qualify for trademark registration with the United States Patent and Trademark Office (“USPTO”). Thus, even with a legally permissible name, some would-be registrants end up unable to enjoy the legal benefits and protections that registration provides.

Which is exactly what happened with The Slants: the USPTO denied their application. Why?

Among its other duties, the USPTO administers the Lanham Act, the federal law which governs all trademarks. The Lanham Act contains a provision which states that registration shall be refused for trademarks that are disparaging (or that meet a few other specified conditions).

The Slants say they don’t use the word in a negative manner. After all, they’re talking about themselves. Instead, they’re using their name (along with some of their song lyrics) to draw attention to racial issues.

No matter. Because “slants” is widely viewed as disparaging, the USPTO denied the band’s request for registration in accordance with the statute. The band sued in response, citing the government’s violation of their free speech rights.

While the case was working its way through the courts, a similar issue came about involving the Washington Redskins. In contrast to The Slants, The Redskins’ marks had already been registered. Yet over the years, numerous Native American groups have sued over the NFL team’s name, citing its derogatory connotations. In the course of one of those suits, the USPTO cancelled the Redskins’ registrations under the Lanham Act’s anti-disparagement clause.

The team has been embroiled in the appeals process since then. When it became clear that The Slants’ case would be heard first, the Redskins requested the Supreme Court hear their case at the same time, due to the similarities. But the Court denied the request and scheduled only the Matal case on its docket. (Maybe they knew their decision on that case would resolve the Redskins case without their having to directly intervene.)

In the end, it was a unanimous decision. The Slants won, and the ban on disparaging trademarks was struck down. As Justice Alito wrote for the majority, “If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.” (Justices Kennedy and Thomas wrote concurring opinions.)

As for the Redskins, the plaintiffs realized that the Matal ruling left them with little basis to proceed with their suit. They dropped their case against the football team days after the ruling. The Redskins’ trademark registrations will remain in effect.

Yet many still feel that regardless of the Matal case outcome, the Redskins’ marks should stay cancelled. For his part, Tam himself says the team should change its name. “Just because something is permissible, it doesn’t mean it’s the right thing,” the Slants’ frontman said.

Whether or not that will happen, there’s likely to be an uptick in the number of applications received by the USPTO, as many marks that were previously denied might now be eligible for registration. And with more businesses being able to protect their intellectual property, those assets may become more valuable.

Are you thinking about registering a trademark? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953.9300 or visit us online at to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

The Slants’ Free Speech Victory Changes the Legal Landscape for Trademarks

How the Courts are Shaking Up the Intellectual Property Legal Landscape

It’s that time of year when the Supreme Court hurries to clear their docket before adjourning for summer.

And this spring, within the space of a week, the Court issued two decisions that will have big implications for patentees (patent holders), their customers, and their legal adversaries.

At the appellate level, one of the federal circuit courts also issued a major decision recently that could spell trouble for online service providers and internet service providers.

Patent owners’ rights disappear when they sell their product.

The Court’s most recent tech decision, Impression Products, Inc. v. Lexmark International, Inc., dealt with the exhaustion of patent rights. When there is an authorized sale of a patented item, what rights does a patentee (patent-holder) give up to the purchaser? And what rights does the patentee retain after the sale?

Lexmark International sells refillable printer cartridges. Impression Products purchases the used cartridges, refills them, and sells them for a lower price. Not liking this practice, Lexmark sued Impression for infringement.  Following a line of precedent from other cases, the Federal Circuit ruled in Lexmark’s favor, finding that the company retained some of its post-sale rights.

But the Supreme Court recently overturned that decision. It held that all of a patentee’s rights are exhausted at the time of the first authorized sale. After that occurs, patentees have no further rights. This is true whether the first sale takes place in or out of the United States.

This decision changes 20 years of precedent. It’s made patent law simpler and more consumer-friendly. The lack of restrictions after the sale might mean result in lower prices for used goods.

At the same time, this ruling might force patentees to rethink how they do business. Because the Court didn’t say that Lexmark has no cause of action. It simply said patent exhaustion precludes there from being a cause of action for infringement.

In order to be able to retain certain rights, companies might need to change their agreements with their licensees and customers. They may also need to revisit some of their strategies, especially those related to pricing.

The implications are big, and will start making themselves clear as fewer patent exhaustion cases emerge.

But Impression Products was actually the second consumer-friendly patent ruling handed down by the Supreme Court recently…

The venue for a patent lawsuit must be convenient for the defendant.

In TC Heartland LLC v. Kraft Foods Group Brands LLC, the Court unanimously limited the venues (locations) in which a patentee could sue an infringer. Previously, a plaintiff could effectively bring suit wherever it sold products.

The court found that there’s only one venue statute that’s relevant for patent matters. The statute, 28 U.S.C. § 1400(b), states that  “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”

The Court ruled that because a corporation’s “residence” is the place it’s incorporated, a suit can be brought either there, or in a place where the defendant has a physical place of business.

Traditionally, the view has always been that a plaintiff should have its choice (with some limitations) of where to file a suit. TC Heartland is a big blow to a lot of patentees who like to bring suit in the Eastern District of Texas. Delaware, where many businesses are incorporated, is now preparing for an influx of IP cases. This decision will also have the result of transferring a lot of the costs of litigation from defendants to plaintiffs.

What other impact will TC Heartland have?  As with everything else law-related, it will probably take some time to tell.

Can websites be liable for content posted by third parties?

Have you ever wondered why certain websites don’t get sued for the information they publish? Those sites are protected by a “safe harbor” provision of the Digital Millennium Copyright Act (“DMCA”). That provision specifies that online services providers (“OSP”s) and internet service providers (“ISP”s) are protected from liability for infringement so long as certain requirements are met.

Part of the theory behind the safe harbor provision is that it would be impractical for an OSP or ISP to be responsible for everything that appears thereon. For example – Google, the company, cannot possibly be aware of everything that appears on Google, the website. Nor should Google be expected to know what material, of everything posted on the site, is infringing on someone else’s copyright.

Therefore, the law shields OSPs and ISPs from liability for infringing acts that are committed by third parties. But, in order for a service provider to qualify for the safe harbor provision, the infringers must truly be third parties. The OSP or ISP cannot have hand in the infringement or any right or ability to control the actions of the infringer.

But what if a website that accepts third-party content has moderators for that content? Are the moderators acting on behalf of the website in question? Is the website exercising control over the infringement? This is the question asked by Mavrix Photographs LLC v. LiveJournal, Inc.

LiveJournal is a website that accepts user content; the content is moderated by volunteers before going live online. Mavrix Photographs brought suit against LiveJournal for infringing 20 of its photographs. LiveJournal moved to have the suit dismissed on the grounds of the safe harbor provision of the DMCA, and the district court granted the motion.

However, the appellate court disagreed. LiveJournal has a process for reviewing photos before they’re posted, a list of resources not to post from, and a tool which blocks all posts from a certain source. As such, the appellate court determined that the ISP might have a right or ability to control the infringement through the moderators. And if that’s true, then the ISP can’t enjoy immunity from liability under the safe harbor provision.

The appellate court reversed the judgment for LiveJournal and sent the case back to the lower court, where LiveJournal will have to prove that it has no role in the infringement in order to be shielded from liability.

OSP and ISP operators are understandably nervous about this case. We’ll be keeping an eye on it as it makes its way through the court system.

Our attorneys have worked on cases dealing with infringement liability and the DMCA. We’ve also helped our clients update their legal contracts to keep pace with changes in the law. To set up a free consultation to discuss your matter—whether related to copyrights, trademarks, patents, trade secrets, entertainment law, or business law—call The Lomnitzer Law Firm today at 561.953.9300 or visit us online at

How the Courts are Shaking Up the Intellectual Property Legal Landscape

Your Personal Name as Your Brand: What to Watch Out For

If you’ve read any of our prior blogs, you know that at the Lomnitzer Law Firm, we’re big proponents of protecting intellectual property rights.

One question we get asked a lot is, what if your intellectual property is your personal name – that is, if your business name is your given name? Is it protectable as a trademark?

Like so many other things in law, it depends.

A Trademarks Primer

Here’s a quick primer on how trademarks work. They’re attached to a particular type of goods or services. And when you register a trademark (or service mark, for services—here, we’ll just say “mark” to refer to either one), you’re registering it for goods or services for which you’re already using the mark in commerce, or intend to soon.

The idea is to prevent a monopoly on the use of a mark across categories in which the mark’s owner does not intend to do business.

For instance, take the word “Apple.” Apple is a registered mark which refers to computers, software, computer peripherals, and other similar products. If you were to introduce a new technology called Apple and tried to register a trademark for it, you might have some difficulty. The U.S. Patent and Trademark Office (“USPTO”) would probably say that what you’re offering is too similar to the other Apple. Not to mention that Apple itself (the California company) would also likely oppose any attempt to register the trademark.

But suppose you were opening a chain of fitness centers under the name Apple. You may be able to register that mark because it’s in a completely different category of goods and services that one may not necessarily expect Apple (the California company) to expand into.

Yet you wouldn’t be able to register the name Apple to describe the fruit of the same name. Why? Because it’s too descriptive of that object. To preclude everyone in the world from referring to an apple as such would be unfair and impractical.

Basically, the more creative a trademark is—in either the wording itself or in the way it’s being used—the likelier a trademark will be granted. The less creative the mark—whether the word is merely descriptive or generic for the item or service it identifies—the more difficult it will be to register the trademark.

When the USPTO is in the process of approving a mark, it publishes the mark in gazette to give people the opportunity to oppose the registration. If no one opposes it, it’s generally smooth sailing. But if someone opposes the mark, the approval process becomes a bit more complicated.

Personal Names in Action as Brands

With all that in mind, consider these recent happenings in the trademark world relating to personal names.

Entertainers Beyonce and Jay Z (the “Carters”) applied last year to trademark their daughter’s name, Blue Ivy Carter, across a broad range of goods and services—14 categories, to be exact. They range from entertainment services to skincare products to baby teething rings.

But the Carters may face opposition from a woman who registered the name Blue Ivy (without “Carter” at the end) in 2012 for party planning and event management services. When the Blue Ivy Carter mark was published for opposition last month, the Blue Ivy owner filed for an extension of time to oppose it, signaling that she intends to do so.

Assuming she does, both sides have a valid point in their arguments. The Carters have an interest in protecting their young daughter’s name from being misappropriated. At the same time, the Blue Ivy mark owner has several arguments in her favor. She could argue that some of the categories the Blue Ivy Carter mark would cover are too similar to hers, causing confusion. She might also argue that Blue Ivy Carter is not currently being used in commerce in all the categories under which the Carters applied. And finally, she would likely want to argue that Blue Ivy Carter is too descriptive, because it’s the name of the individual who would be providing the goods or services.

We’ll be watching this to see what happens after the Blue Ivy owner files her opposition.

President Donald Trump has spent years fighting for the rights to his name for construction services in China and was finally handed a victory. Under China’s “first come first served” trademark registration policy, someone else received the rights to use the name because he had applied before Mr. Trump did in 2006. However, the original mark was invalidated late last year, while Mr. Trump’s application was allowed to proceed and is expected to be approved quickly. (This has led to speculation that China is attempting to win over the President, and that Mr. Trump’s acceptance of the registration of the marks might violate a provision of the U.S. Constitution. But that goes beyond the scope of this blog.)

A recent case in the UK involving designer Karen Millen and the company Karen Millen Fashions Limited is reminiscent of one in the US several years ago which involved fashion designer Joseph Abboud. Abboud had sold his trademarks to JA Apparel Corp. and then began a new fashion line called Jaz with the tagline “a new composition by designer Joseph Abboud.” Abboud was sued by JA Apparel for using his own name in this manner, but the court ruled in his favor, and he is allowed to use his name subject to certain limitations.

General Guidelines

So it seems that you can trademark a personal name, at least in certain circumstances. Here are a few guidelines:

The name needs to identify and distinguish the services or goods specified in the trademark registration, and not merely the individual. There needs to be a connection in the mind of the consumer. For example, for George Foreman to register his personal name for barbecue grills, there needs to be demonstrable evidence that when people hear his name, they think of grills.

The name needs to be used in commerce, either directly in connection with rendering goods and services, or in the advertisements for those goods and services.

Finally, a certain level of fame or celebrity helps – though there is no bright-line rule for how well-known you have to be.

Are you thinking about trying to trademark your personal name, or anything else? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953.9300 or visit us online at for your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.  

Your Personal Name as Your Brand: What to Watch Out For

New Year, New IP Policies… Which Ones Will Affect You?

With a new Congress in session and a new President about to take office, change is in the air. But should we expect anything to change in the realm of intellectual property law?

Definitely. It already has.

Check out these new developments that happened at the end of 2016, and consider whether you need to make any changes to your business in order to be compliant.

  • A new policy set forth by the United States Copyright Office requires some businesses to update specific information online.

This impacts you if you run a company that provides internet services (“ISPs” or “internet service providers”) or a website that accepts user-generated content (“OSPs,” or “online service providers”). OSPs that publish search engine results (such as Google), consumer reviews (Amazon), or even readers’ comments (Twitter, Huffington Post, chatrooms and forums) are larger examples of these types of websites. Millions of smaller OSPs do the same.

User-provided content posted online sometimes violates the intellectual property of others—particularly copyrights. Which leads to the question: could an OPS’s operators be found liable in the event of an infringement lawsuit? After all, they’re hosting the offending content.

Before you panic, the answer is generally “no.” The law does not always expect OSPs to know what user-generated content is infringing. A “safe harbor” provision in the Digital Millennium Copyright Act specifically provides OSPs’ operators with immunity in the event of an infringement lawsuit.

Yet protection isn’t automatic. To qualify, OSPs need to follow certain procedures. For one, they cannot have known about the infringement prior to it happening. When they become aware of it, they must quickly remove the infringing content. They also need to designate an agent (a “DMCA Agent”) to receive claims of copyright infringement and provide that agent’s information to the U.S. Copyright Office.

New regulations issued by the Copyright Office on December 1, 2016 have changed the procedure for designating a DMCA Agent. To do that, OSP owners now need to create an online account with the Copyright Office, and designate their DMCA Agent through the account.

ISPs and OSPs that have never before registered a DMCA Agent should follow the new procedure starting today. But if you own an OSP and have already provided the Copyright Office with your DMCA Agent’s information, you have until December 31, 2017 to create your online account and provide your DMCA Agent’s information.

  • Businesses cannot require their customers to sign away their rights to share their opinions.

In the internet age, reputation management has become more important – and difficult – for businesses than ever before. Some attempt to maintain control by regulating what their customers post in online reviews.

For example, a wedding venue may put a clause in their contract with an engaged couple. The clause might say that any negative reviews posted online by the couple or their guests are a breach of contract which allows the wedding venue to sue. Or the clause may say that the venue is within its rights to assess the couple a monetary fine.

Another approach some vendors take is to have a clause in the contract which states that the vendor owns the copyright to the customer’s reviews. When the vendor sees a review it doesn’t like, it files a takedown notice in accordance with the Digital Millennium Copyright Act (a different provision of which was discussed above).

If you think these practices are unfair, you’ll be pleased to hear that the government agrees with you and is putting a stop to them. The Consumer Review Fairness Act (“CRFA”) has been unanimously passed by both houses of Congress and was recently signed by President Obama. The CRFA prohibits each of the tactics described above and protects the public’s right to post their opinions online. Businesses violating the CRFA could face action from the Federal Trade Commission.

Some industry watchdogs are concerned that the CRFA doesn’t go quite far enough, because a loophole in the wording may allow for vendors to lodge claims of defamation in response to negative consumer reviews. Regardless, consumer advocates view it as a big step in protecting consumers’ First Amendment rights.

  • On a more irreverent note, businesses and individuals alike will be hearing far more unreleased music than ever before.

This one doesn’t require any action on your behalf, but it may change what you’re hearing on the radio or through your streaming music service.

You may have noticed that over the past few years, more previously-unreleased music has been released than in any other prior period. 2016 in particular saw a wave of these releases featuring music from 1966, including the multi-artist compilation Motown Unreleased: 1966; The Beach Boys’ Graduation Day 1966: Live at the University of Michigan; Bob Dylan’s The 1966 Live Recordings; and Pink Floyd’s The Early Years Box Set.

Here’s why.

In 2011, the European Union updated its copyright law in a way that allows officially unreleased material to fall into the public domain 50 years after it was first recorded. Once in the public domain, anyone would be free to release it, play it, or use it. But by releasing the music in question before the 50-year clock runs out, copyright-holders prevent this from happening. The music stays out of the public domain and under their control.

This is a classic example of using the law as a business-planning tool to protect your assets. It’s legal, and it’s smart. After all, a company’s intellectual property is often more valuable than any physical assets it owns.

That’s where we come in.

Do you have a question about your intellectual property? Or do you have any concerns about the new DMCA Agent rules or CRFA compliance? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953.9300 or visit us online at for your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

New Year, New IP Policies… Which Ones Will Affect You?

Music May be Less Widely Available in the Future. Here’s Why.

Though you may not have known about it, the government and the music industry recently went to battle.

And though you may not have known about it, it affects you whether you’re a musician, a business owner, or a music fan.

While the government won, the outcome is not final, and the music industry will continue its fight. And with parties on both side agreeing that legislative change would be ideal, such change may come in the not-too-distant future.

The Dispute Over Blanket Licenses

Imagine how difficult it must be for musicians to singlehandedly license their music and collect royalties for it. To seek to collect from every business owner (think bars, restaurants, gyms, retail establishments, and more), radio station, or digital music service (like Pandora and Spotify) who uses an artist’s music would be a monumental task. It could actually take more time than it would take to record new music. And if that were to happen, artists would quickly find themselves running out of money.

That’s where PROs come in. PROs, short for Performing Rights Organizations, collect royalties on behalf of the musicians they represent. Because PROs make it so much easier for musicians to get paid, most musicians join one, usually BMI or ASCAP.

Concerned about the monopoly created by these PROs, the government filed an antitrust lawsuit against them in 1941. As part of the settlement, the PROs agreed to issue blanket licenses to music users like the businesses described above. Blanket licenses allow for music users to pay a single fee to a PRO in exchange for access to the PRO’s entire catalog of music. These licenses give businesses the freedom to offer a wide variety of music to their customers without having to worry about the threat of an infringement lawsuit.

The music industry has inarguably changed since 1941, but the settlements remain intact as they were entered into 75 years ago. ASCAP and BMI, with the support of other key music industry players, recently asked the Department of Justice (“DOJ”) to review and update the rules of their settlements (also called “consent decrees”).

The DOJ said no.

Proposed Changes to the Consent Decrees

As the consent decrees currently stand, the DOJ says the PROs are required to provide “full work” licenses. To illustrate how these licenses work, suppose you are a musician represented by BMI and your songwriting partner is not. This means you and your partner fractionally own the rights to the work, and two things can happen.

First, you may offer the song through BMI, even without your partner’s express permission, so long as you ensure that person gets their share of the royalties. This is due to the way copyright law treats joint works of authorship.

Second, if I have a BMI blanket license for my business, I can use your song without having to worry about tracking down your partner to get permission. My blanket license “covers” the musical work in its entirety, regardless of anyone else who may have had a role in its creation (or later acquired rights in the music).

Music users tend to believe that the PROs have always offered full work licenses. Yet music rightsholders (such as writers and producers) disagree, claiming that the PROs never offered such licenses to perform works over which they only had fractional control (such as the one in our example).

BMI and ASCAP take the position that the consent decrees do not prohibit fractional licensing, but suggested that the consent decrees be amended to explicitly allow for fractional licensing. So if I wanted to use your song, I would now have to track down your partner to get their permission, or get a blanket license with their PRO.

In addition to requesting fractional licensing, the music industry also sought for music creators to be able to partially withdraw rights from the PROs. That is, artists want to be able to prevent PROs from granting rights to certain users, such as digital music services. Under such a plan, my license might permit me to play all of BMI’s musical works at my health club, while Pandora would not be granted the same rights.

The DOJ Rejected These Requested Modifications

While the DOJ acknowledged that it may soon be time to update the consent decrees, it rejected the request to do so right now.

The decision rests largely on the language in the consent decrees. The decrees require ASCAP to offer its users the ability to perform all “works” in its catalog, and BMI to offer its users the same for all “compositions” in its catalog. To allow the PROs to now determine that only some music would be covered contradicts the plain language of the settlements.

Moreover, only full work licensing delivers the benefits that the PROs provide to the public. As the Supreme Court of the United States explained in one famous case, blanket licenses “allow the licensee immediate use of covered compositions without the delay of prior individual negotiations, and great flexibility in the choice of material.”  Broadcast Music, Inc. v. CBS, Inc., 441 U.S. 1, 21-22 (1979).

If the PROs were to begin issuing fractional licenses, music users would be required to individually negotiate each track they wanted to use. The time it would take to do so would prevent immediate use of the music in question. Fractional licenses would also likely reduce the scope of the music users would be able to work with. If someone with rights to a certain song were to withhold a license, users would be infringing – contrary to the very protection that a blanket license is intended to provide.

As the DOJ noted, fractional licenses would give rightsholders bargaining leverage to demand substantial sums of money. Of course, such bargaining power would necessarily depend on whether all the rightsholders could even be identified. Songwriting credits (and transfers of rights, if applicable) are often not established until after a new track is released. Moreover, there is no uniform tracking system in place which shows who all the rightsholders are for any given song. As such, music users would not even know who to contact to obtain a license.

Who else would be impacted? The end users. The purpose for licensing is to entertain the public (i.e. a business’s customers). Yet the proposed changes to the consent decrees mean they would probably not get to hear as much music as they do now.

For all of these reasons, the Department determined that fractional licenses are not in the public interest. It stated that the consent decrees require full work licensing and refused to modify them.

Change May Occur in the Future

The industry argues that fractional licensing would encourage competition, thus accomplishing the aims of the 1941 antitrust lawsuit. Such licensing would also promote collaboration between music creators who are represented by different PROs (or are not represented at all). By requiring full licensing, the government is impeding creativity and taking an undue role in musicians’ business and financial decisions.

So it seems that the DOJ has a valid point… as does the music industry. Which is why the fight is far from over.

BMI is challenging full licensing in federal court. The PRO recently submitted a letter seeking to confer with the court and the government before filing a motion. The motion will seek either (a) a declaration that BMI’s consent decree does not require full work licensing or (b) a modification to the consent decree specifically allowing for fractional licensing.

ASCAP is also taking action. The PRO is seeking legislative changes which would allow for fractional licensing and reflect the collaborative dynamic that is a hallmark of music in the digital age.

It’s too early to tell whether either effort be successful. Yet the DOJ itself said that a “comprehensive legislative solution may be possible and preferable.” With all parties agreeing that something should change, perhaps it will occur sooner than expected.

If you have a question about music royalties, or any other entertainment or intellectual property-related legal matter, contact us at (561) 953.9300 or visit us online at

Music May be Less Widely Available in the Future. Here’s Why.

The Politics of Using Music to Promote Politics

Music and politics have always made for natural bedfellows. No wonder – both provide telling portrayals of the cultural zeitgeist at any given time. Musicians frequently write about politics and political issues. And politicians (like many others) are often inspired by music.

But for political candidates who wish to express their musical tastes by using particular songs as campaign music, many musicians have only one thing to say:

Stop it.

How can this be? Haven’t these musicians already given permission for their songs to be used? And if they didn’t give permission, can’t they just sue the candidate?

The short answer is that politicians do need permission—but not always from the musician (or other copyright holder, as not all copyrights are owned by their creators. We use the word “musician” in this blog post to refer to whoever the copyright owner may be.)

There are various types of music licenses, and the license required depends on how the music is being used. A televised commercial requires two licenses. One is a mechanical license, which grants reproduction and distribution rights for a musical recording. The other is a synchronization license, which permits the license-holder to sync the musical recording with corresponding audiovisual images. These licenses are generally issued by rights managers or publishers on behalf of the musician. So any time you hear a song on a televised commercial, the musician has given approval (or the entity airing the commercial is opening themselves up to a lawsuit).

But a live event, such as a campaign stop or party convention, is different from a commercial and requires a different kind of license: a public performance license. These licenses are granted by performing rights organizations (PROs), which collect royalties on behalf of musicians for the public performance of their songs. When a song is played on the radio, at a nightclub or gym or otherwise performed publicly, PROs collect and distribute the payments for these performances.

As you may imagine, the vast number of songs played daily mean that there’s a lot to keep track of. One way PROs handle this is by offering blanket licenses. These allow for the music user to publicly perform any song in the PRO’s music catalog. No permission is needed from individual musicians.

Here’s how this all works in real life. Take, for example, “We are the Champions” by Queen. A political candidate could not use the song in a television commercial without getting permission from the band. However, if a candidate wanted to play “We are the Champions” at a campaign rally, or at his party convention, he would only need a license from Queen’s PRO, BMI. And if the candidate were to have a blanket license from BMI, then he would be within his rights to play any song in BMI’s catalog at his political rally. Whether or not Queen approves does not matter.

So what recourse do musicians have when a political candidate they don’t like uses one of their songs? If a musician wants to litigate:

  • They can attempt to sue under the federal Lanham Act, which controls trademarks and deals with (among other things) falsely implied endorsements. A musician might argue that the politician’s use of the song implies that the musician endorses the politician, in violation of the act.

This concept hasn’t been very well tested in the courts, though, and the lawsuit that went furthest on this issue had its Lanham Act claims rejected. Plus, with so many musicians this election season speaking out against the use of their music, the “implied endorsement” theory might be a long shot.

  • Musicians can sue under right-of-publicity laws, which also often cover false endorsements. Yet these laws vary state by state, and not all states have one. The state where the song was played would need to have a right-of-publicity law in order for legal action to be possible. And even still, the implied endorsement theory might fail.
  • Songs that were recorded before 1972 are currently not subject to federal copyright law, but to state law. So if a pre-1972 song were played at the Democratic National Convention, a court would look to Pennsylvania law to determine whether that state protects against the unauthorized performance of music. If the state does, then the musician may have a valid cause of action.

But litigation can be expensive and time-consuming – and there are no guarantees of success. So musicians might want to try one of these alternate methods:

  • They can ask their PRO to revoke the license for the particular song, creating an exception within the blanket license. This purportedly worked for Queen, who did not want “We are the Champions” to be played at the Republican National Convention.
  • And of course, they can take their case to the court of public opinion. This seems to be the most popular option this election cycle, with many musicians making statements through their publicists and venting their frustrations on social media. Which is how tweets such as “@ScottWalker @GovWalker please stop using our music in any way…we literally hate you !!! Love, Dropkick Murphys” make their way into the public consciousness.

Copyright law can be confusing. If you have a question about copyright law or would like to discuss a matter pertaining to copyrights, trademarks, patents, or rights of publicity, visit us online at or call us at 561.953.9300.

The Politics of Using Music to Promote Politics