Thursday, August 21, 2014

Dastar and karaoke

Slep-Tone Entertainment Corp. v. America’s Bar & Grill, LLC, No. 13 C 8526, 2014 WL 4057442 (N.D. Ill. Aug. 15, 2014)

Slep-Tone sued defendants for violations of the Lanham Act.  Slep-Tone makes karaoke accompaniment tracks sold under the trademark “SOUND CHOICE.” It also alleged a distinctive and protectable trade dress, which includes (a) the use of a particular typeface, style, and visual arrangement in displaying lyrics; (b) the Sound Choice marks; and (c) the use of particular styles in displaying entry cues for singers, namely a series of vanishing rectangles to indicate the cue. [As an aside, I would be interested to see the proof of these allegations with respect to karaoke audiences, as opposed to operators of establishments that host karaoke, who are the alleged wrongdoers in these cases and thus presumably unconfused.]

Slep-Tone originally released CDs encoded in a special format known as “CD+G” (“compact disc [audio] plus graphics”) allowing for synchronized playback of audio and video suitable for prompting singers with lyrics cues. These tracks can now easily be ripped to a computer hard drive and format-shifted to MP3+G or WAV+G.  Slep-Tone’s media-shifting policy attempts to impose rules on media-shifting karaoke operators.

Defendants provide  karaoke services through karaoke accompaniment tracks, stored on hard drives.  Slep-Tone alleged that they used “counterfeit” tracks displaying the Sound Choice marks and trade dress without authorization, likely causing users [who?] to believe that Slep-Tone created the tracks or authorized the services.  [We’ll hear more about Dastar below, but since our focus has to be on physical origin, I wonder whether consumers would have any opinion at all about physical origin here.]

Defendants argued that Dastar barred these claims, since Slep-Tone’s marks and trade dress were inherent, indivisible parts of its copyrightable karaoke tracks.  Thus, allowing Slep-Tone’s claims would improperly create a “species of mutant copyright law.”  Slep-Tone alleged that the marks and trade dress were completely separable from the copyrightable content.  A prior case, Zuffa v., rejected a trademark claim by an organizer of pay-per-view MMA fighting against a website that allowed users to upload and share video streams.  The trademark claim was based on the defendant’s display of trademarks, including the eightsided ring where championship bouts took place, when the video was streamed from defendant’s site.  Zuffa held that extending protection over marks inherent to the video, such as the ring, would prevent display of the video even after the copyright expired.  However, the court didn’t dismiss claims relating to the display of trademarks which were not an inherent part of the video broadcast.

At this stage, the court found that Slep-Tone adequately alleged that it was not impossible to display the copyrightable material without the mark.  [I think this is an interesting attempt to make Dastar work, but I’m not sure it succeeds.  Much depends on the facts; arguably this is just the “Scylla and Charybdis” problem discussed in Dastar, where the Supreme Court attempted to solve the problem by removing Scylla (no liability for nonattribution) but not necessarily removing Charybdis (possible liability for attribution, where attribution consists of something more than copying the expressive work).  Consider: the title of a work alone is uncopyrightable.  That implies that work-title = work for copyright purposes. But it must be the case that a trademark claimant can’t require a copier of a public domain work to use a different title for it.  Is the work separable from its title for Dastar purposes?  An additional wrinkle is that Slep-Tone isn’t claiming copyright infringement because, as I understand it, it doesn’t have the rights to do so; under other circumstances, its selection, coordination, and arrangement of the visuals might well themselves qualify as a copyrightable derivative work of the lyrics.  The Dastar problem, then, could be much deeper.]

Defendants also argued that first sale protected them because media-shifted tracks weren’t materially different from the original.  This is a version of my question about what consumers would think about source, though I wouldn’t frame it as first sale—and neither would this court.  While defendants argued that there was “no discernable difference in the bar patron’s experience in seeing, hearing, and perhaps singing along to a media-shifted karaoke track within the bar’s premises,” Slep-Tone alleged that the media-shifted tracks were unlawful counterfeit copies.  First sale doesn’t include copied items “merely because they may ‘pass’ for the original item,” and Slep-Tone alleged more than resale of original goods.

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