12:50pm PT by Ashley Cullins
Hollywood Docket: Bob Marley Coffee, Kardashian Beauty and Spotify's Settlement
Bob Marley's heirs are going to be jammin' all the way to the bank, after a California judge awarded them $2.4 million in a trademark infringement case against Marley Coffee.
Fifty-Six Hope Road Music and Hope Road Merchandising, the companies that manage Marley's intellectual property on behalf of his heirs, and Jammin' Java Corporation began working together in 2012, but their deal ended after the coffee company failed to properly pay royalties. The parties then decided to enter into a short-term licensing agreement while they evaluated their future business relationship.
During that time, Marley's companies found Jammin' had materially breached their new deal by failing to market and advertise Marley Coffee, improperly sublicensing its trademark rights and failing to pay royalties owed under the first agreement. Fifty-Six Hope Road ended the relationship in 2016, but Jammin' continued to use the Marley trademarks, sparking this lawsuit.
U.S. District Court judge Stephen V. Wilson on Tuesday found that, because Jammin' was unable to show any costs associated with the trademark, the appropriate damages award is the full gross revenue from Marley Coffee products.
In February, Wilson granted summary judgment in favor of Marley's heirs finding that they properly terminated the short-term license.
Marley's companies were represented by Bonnie Eskenazi, Jon Sokol and Priya Sopori of Greenburg Glusker.
In other entertainment legal news:
— Kardashian Beauty is going to need to change its name, after an appellate court has upheld an injunction barring the cosmetics company from using the famous sisters' trademarks for its products. Kim, Khloe and Kourtney Kardashian first faced off with Haven Beauty and Hillair Capital in July, with each side claiming the other breached their trademark licensing deal for the beauty line. The Kardashians say they weren't paid royalties owed, while Haven claims they failed to promote the products. U.S. District Court judge James V. Selna in August granted a preliminary injunction barring Haven from using the Kardashian name. The company appealed, but the 9th Circuit has sided with the sisters. "It is uncontested that Hillair never made any royalty payments, yet it continued to use the Kardashians’ trademarks for the life of the Agreement and even after its termination," states the opinion. "A party to a contract cannot both refuse to perform its obligations and continue to avail itself of the contract’s benefits, even if it believes that the other party has breached." The Kardashians are represented by Michael Kump and Jonathan Steinsapir of Kinsella Weitzman. (Read the full decision here.)
— Carlton Ridenhour, better known as Public Enemy's Chuck D, is suing Alt House Productions to void an agreement granting various rights for a documentary because he says they convinced him to sign it without consulting an attorney and now it's keeping him from making a deal for a feature film about the rap group. Ridenhour says he was approached by the company in 2015 because it wanted to produce a documentary about Spectrum City, a Long Island-based group he recruited to form Public Enemy in the 1980s. The rapper says Alt House purposely circumvented his attorney to convince him to sign an agreement authorizing the use of his name, voice, likeness, appearance and intellectual property — without the advice of his counsel — in exchange for five percent of the documentary's net proceeds. Then, in April 2016, Alt House amended the agreement to include "narrative rights in the documentary," which Ridenhour says included "some vague mention" regarding his life rights. Now, he's fielding "significant interest" in a feature-length film about Public Enemy's history, which may overlap with that of Spectrum City, and negotiations are being held up because Alt House claims it has exclusive rights to the predecessor group's story. Ridenhour is asking the court for a declaration that the 2015 agreement and 2016 amendment are void because they were "intentionally secured in the absence" of his counsel. Alt House did not immediately reply to a request for comment.
— Village People singer Victor Willis will rejoin the group for its 40th anniversary, now that he's reached a settlement with publisher Scorpio Music in his long-standing copyright termination fight. Willis terminated the copyrights in his share of the more than 30 songs including "Y.M.C.A." in 2011, and the publisher filed a lawsuit claiming he didn't have the right to do that because the works had several authors. A jury in 2015 decided in Willis' favor and found he owns half the copyright in the works. Days after appellate arguments in the 9th Circuit, the parties have announced a confidential settlement that resolves all issues globally and allowed for Wills to return as lead singer after a 35-year hiatus.
— Spotify has reached a more than $43 million settlement in a copyright infringement lawsuit from a class of songwriters who say the service used their works without paying for mechanical licenses. Under the deal, which is pending approval from a New York federal judge, Spotify will establish a $43.45 million settlement fund from which qualifying class members will be paid for past streaming or downloads of their works. The streaming giant also agreed to pay future royalties, which were calculated at the current statutory rate, and to make its track database available to help songwriters determine which of their compositions are included in the settlement. Spotify is also picking up the tab for all costs associated with the management of the fund. The class was represented by attorneys from Susman Godfrey and Gradstein & Marzano. (Read the full proposed settlement here.)