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Posts from the ‘Copyright Law’ Category

Restaurants Targeted for Intellectual Property Violations for Allegedly Pirating Sporting Events

With the growing popularity of World Cup soccer in the Washington, D.C. area,  more and more bars and restaurants are hosting watch parties and cashing in on the merriment of this quadrennial soccer carnival.

As with playing copyrighted music (See here for our post discussing music licenses), restaurant and bar owners need to know the licensing rules for broadcasting major sporting events at their establishments.

In the last several years, thousands of restaurants have been sued in federal court for allegedly intercepting and showing licensed sporting events illegally.  The results of the lawsuits – defendant restaurants have been forced to pay $25,000, $50,000 and even upwards of $100,000 for statutory violations of federal law.

Many restaurants purchase commercial cable subscriptions and pay additional pay-per-view fees in order to broadcast certain sporting events at their establishments.  Commercial pay-per-view licensees and exclusive domestic commercial distributor of such sporting programs as Ultimate Fighting Championship (“UFC”) fighting matches, CONCACAF Champions League soccer matches, and FIFA’s World Cup games, monitor restaurants and bars to see who is broadcasting their programming.   These licensees send private investigators, some with cameras, to document restaurants that show these sporting events.  If the restaurant does not have a contract to show these events, or the restaurant is using a residential pay-per-view account rather than the more expensive business account, then the licensees or its agents sue the restaurant in federal court.

UFC has reported that from 2006 through January 2012, it collected $4.7 million in settlements from these commercial cases.[1]  J&J Sports Productions, Innovation Sports Management, Joe Hand Promotions, Inc, frequently file complaints in federal district court alleging violations of 47 U.S.C. § 605 of the Federal Communications Act of 1934, as amended (“FCA”), 47 U.S.C. § 553 of The Cable and Television Consumer Protection and Competition Act of 1992, as amended, and common law conversion claims.  Many of these law suits name the individual owners of the restaurants and bars as defendants along with the corporate entity.

Restaurants and bars who receive demand letters or complaints against them for these types of violations need to take these allegations seriously.  The sports licensees have won a number of substantial default judgments against restaurants who have failed to respond to these complaints.[2]  Restaurants should read their cable/satellite contract or pay-per-view contract carefully to ensure it allows for the public broadcast of such sporting events.

Doyle, Barlow & Mazard PLLC has successfully defended clients against these types of cases in federal district court on behalf of restaurant clients.  For more information, contact :

profile_blogRosemarie Salguero, Esq.
rsalguero@dbmlawgroup.com
(202) 589-1836

 

 

 

 


[1] http://www.businessweek.com/articles/2012-04-12/pay-per-view-wrestles-with-bar-owners

[2] http://www.bloomberg.com/news/2012-04-13/ultimate-fighting-boxing-on-pay-tv-spark-pirate-lawsuits.html

What’s in a name? Why trademarking your business name can save you costly litigation fees.

In a city with an established and buzzing restaurant scene, eateries in Washington, D.C. rely on their names to promote their dishes and gain clientele.  Ben’s Chili Bowl conjures up thoughts of a salty half smoke at the U Street establishment, and the name Sweetgreen is likened to a gourmet salad with fresh, local ingredients. Thus, restaurants should protect their names as fiercely as they do their secret recipes.

A restaurant may protect its name by filing for trademark protection under the Lanham Trademark Act (15 U.S.C.A. § 1125).  Trade names under the Act are distinctive designations used to identify businesses. The purpose in protecting trade names is multifaceted. Infringement of a trade name may result in unfair trade because one party is unjustly appropriating the identity of another and as a result, the goods or benefits of another.  Further, infringement threatens the interests of the business by putting its reputation at risk. Consumers are also protected by the Act because protecting trade names promotes quality, service and good will by assuring businesses that they will be able to reap the benefits of a positive reputation.

At what point is a name unique enough to warrant protection under the Lanham Trademark Act?  Trade names can either be generic, descriptive, or suggestive, arbitrary, or fanciful.  A generic mark is ineligible for trademark protection.  For example, a restaurant named Pizza Place is unlikely to prevail against a restaurant named Pizza Corner for trademark infringement.  A descriptive mark describes a characteristic of the product and is only eligible for protection if it has a “secondary meaning.”  To acquire a “secondary meaning,” consumers must understand that the name does not refer to the ordinary meaning, but to a particular business that the mark identifies.  It is best for a restaurant if their name is considered suggestive, arbitrary, or fanciful.  These names are inherently unique and distinctive, thus protected under the Lanham Act.

In 2007, a lawsuit from Northern Virginia pitted Buffalo Wing Factory against defendants who opened a restaurant named Buffalo Wings House.  See Buffalo Wild Wings Factory, Inc. v. Mohd, 622 F.Supp.2d 325, 335-36 (E.D. Va. 2007).  The plaintiff had a valid and existing trademark registration for the mark “Buffalo Wings Factory” and had spent a considerable amount since opening in 2000 advertising its mark in local newspapers and print media, and on local radio stations. The defendant’s name and menu were substantially similar to that of Buffalo Wings Factory, both restaurants were casual dining restaurants with sports themes, both had similar color schemes, and were located in strip malls. Most importantly, customers continuously confused the two establishments; some attempting to use coupons from defendant’s restaurants at Buffalo Wings Factory.  Produce vendors and suppliers were also confused. The parties settled out of court, and signed a consent order included both monetary terms and injunctive provisions requiring the defendant to change its  trademarks, tag lines, signs, menu and product offerings, and to drop several of its copied sauces.

The touchstone of granting protection under the Lanham Act to a mark is whether there is a “likelihood of confusion.” In the Buffalo Wings Factory case, it was evident that customers and vendors alike confused the two restaurants, supporting the plaintiff’s complaint. Courts balance several factors in deciding whether a name is likely to confuse customers. These factors include: the distinctiveness of the first mark, the similarity between the two marks, the similarity of the goods or services the marks identify, the similarity of the facilities used for business, the defendants intent, and actual confusion the marks may cause.

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Music Licensing 101 – Playing Copyrighted Music at a Restaurant Can Be Costly

The National Association of Licensing and Compliance Professionals (“NALCP”) held their 6th Annual Conference on October 12-14, 2011 inPhiladelphia,PA.   The conference consisted of three days of informative sessions for licensing professionals from around the country.

Of particular interest for restaurateurs was a discussion by Dan Spears, Assistant Vice President of Licensing for Broadcast Music, Inc. (“BMI”).  At the conference, Spears warned restaurant and bar owners that unless they previously purchased licenses from the major performing rights organizations such as BMI or its counterpart, American Society of Composers, Authors and Publishers (“ASCAP”), the restaurant or bar owner was committing copyright infringement.

This warning is not limited to large music venues but includes small mom & pop restaurants and bars playing music bought on iTunes.  Copyright law prohibits the unauthorized public performance of music.  Playing music in the background may not seem like a “public performance” but under the law, it is.  Section 101 of the Copyright Act states that to perform or display a work “publicly” means “to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.”  A performance is also considered to be public if it is transmitted to multiple locations, such as through television and radio.

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