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Intellectual Propery Update: Spring 2008
Intellectual Propery Update: Spring 2008
Intellectual Propery Update: Spring 2008
About our Intellectual Property Karaoke Device Manufacturer Not Entitled to Print or Display Song Lyrics in
Practice Group Real Time with Song Recordings by Virtue of Acquiring Compulsory Mechanical
License for Copyrighted Musical Compositions
Our Intellectual Property Practice Group
T
counsels clients on matters related to the
he U.S. Court of Appeals for the Ninth Circuit has held that a karaoke device
protection of copyrights, trademarks, and trade
manufacturer was not entitled to print or display song lyrics in real time with song
secrets, including preparation and processing
of trademark and copyright applications, recordings on the basis of its having acquired a compulsory mechanical license to
consultation regarding infringement, copyrighted musical compositions under Section 115 of the federal Copyright Act. The
preparation of licensing agreements, and related ruling came in a declaratory judgment suit filed by the manufacturer, who had obtained
matters. Our services include: a compulsory mechanical license from defendant BMG Music Publishing, through its li-
censing agent, but who was denied the right to include BMG’s copyrighted musical com-
• Protecting creative and literary positions in its karaoke devices unless it also paid a “lyric reprint” fee and a “synchroniza-
works, pictorial and graphic works, tion fee” to BMG.
designs, trade and service marks and
other creations, both in the United Plaintiff Leadsinger, Inc. sought a declaration that it was entitled to print or display song
States and in foreign countries; lyrics in real time with song recordings in its karaoke device as long as it obtained the com-
• Consulting with regard to the pulsory mechanical license, or, in the alternative, that it was entitled to do so under the fair
preparation of derivative and use doctrine. A federal district court dismissed Leadsinger’s complaint for failure to state a
collective works, protection
claim, and, on appeal, the Ninth Circuit affirmed.
of unpublished works, proper
publication notice, and creation of
Considering Leadsinger’s argument with regard to the compulsory mechanical license, the
“works made for hire”;
• Counseling regarding innocent Ninth Circuit affirmed because it found that Section 115 of the Copyright Act exclusively
infringement of copyrights and does not apply to sounds “accompanying a motion picture or other audio visual work.”
trademarks; The Court of Appeals reasoned that devices displaying song lyrics in real time with song
• Counseling with respect to rights to recordings constituted “audio visual works,” which meant that Section 115 did not apply to
re-sell, structuring of assignments, the plaintiff’s device so as to prevent the defendant from charging Leadsinger synchroniza-
licenses and sub-licenses, and tion fees and lyric reprint fees in addition to the mechanical license fee provided for in that
recording of transfers; section of the Copyright Act.
• Obtaining and interpreting
trademark searches and assisting As for Leadsinger’s “fair use” argument, the Court of Appeals found that the purpose and
clients in creating trademark rights character of Leadsinger’s use in this case was commercial, the song lyrics displayed by the
through first use and registration; plaintiff’s karaoke machine fell within the core of copyright protection, and Leadsinger
• Dealing with trademark oppositions, used song lyrics in their entirety. For those reasons, the Court of Appeals affirmed the
petitions to cancel registrations,
district court’s dismissal of Leadsinger’s request for a declaratory judgment based on the
abandonment, likelihood of
confusion, and quality control;
fair use doctrine, rejecting Leadsinger’s argument that it was entitled to a fair use defense
• Counseling on antitrust problems, because karaoke machines could be used for “teaching,” namely, instruction on singing,
unfair competition and other matters which the Ninth Circuit said could not be reasonably inferred to have been the actual pur-
related to intellectual property law; pose of Leadsinger’s use of copyrighted lyrics in its karaoke machine. Likewise, the Court
and of Appeals rejected Leadsinger’s argument that it was entitled to a fair use defense because
• Helping clients develop ways to its use of lyrics helped consumers to understand the words to a song, facilitating “parental
protect against disclosure of trade control over objectionable song words.”
secrets, including confidentiality
agreements with employees and Source: Leadsinger, Inc. v. BMG Music Publishing, U.S. Court of Appeals for the Ninth Circuit, No. 06-55102, Janu-
others. ary 2, 2008.
If you would like further information Amended Complaint Treated as De Facto Supplemental Complaint Allows
about any of the topics mentioned in this Copyright Infringement Plaintiff to Continue Suit When Registration Obtained
publication, please contact James F. Gossett After Filing of Initial Complaint
at 312.876.7833 or jfgossett@arnstein.com.
The U.S. Court of Federal Claims has held that a federal inmate was not precluded from
© 2008 Arnstein & Lehr llp