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IP Law & the Arts

The intersection of law and the arts presents unique challenges calling upon different aspects of intellectual property law. A particular artistic problem may involve elements of copyright, trademark and even patent law.

However, before the practicalities of representing an artist are dealt with, the attorney must first listen to the artist. The key initial step in assisting an artist with a legal problem is to really listen to the artist for her or his explanation of that problem. Artists are by nature sensitive and perceptive people. Usually an artist is not the loudest voice in the room, but the artist’s observations will be among the most subtle and likely to assist the attorney in obtaining a favorable outcome. Often the solution is not only monetary; it involves obtaining peace of mind so the artist can continue to work.

Once the artist’s concerns and observations are taken into account, it is time to consider all of the legal tools available in the situation.   For instance, an artist whose iconic image has been appropriated for commercial use will need to consider–at least–copyright, trademark and unfair competition law. If the work may have been made for hire, the state law of agency or contract may come into play. Thus, the successful art lawyer cannot simply be a copyright or contract attorney.

To take another example, a graphic artist may ask inquire of the attorney whether it is desirable to obtain a copyright registration on a drawing used to create a functional object. Unbeknownst to the artist, the best protection may be in a design patent or trade dress. Only a lawyer who knows patent law will recognize this issue.

Finally, the term “artist” should not be constrained to visual artists, but should also include writers, musicians and even choreographers and architects. (Also, the issues regarding photography are increasingly complex as anyone with a digital camera can produce thousands of copyrightable images in one day.) For instance, a writer may have an obvious copyright issue in his or her story, but there may also be more subtle problems of trademarks, signature characters and the elusive concepts of “branding.”   Only a firm with the breadth of experience in all of intellectual property law can “see the whole field” of art law. The attorneys at Karish & Bjorgum have that experience.

Representative art law matters and clients include:

1.    Twitchell v. United States, et al.: This case was an epic battle by muralist Kent Twtichell to raise awareness and obtain vindication of his rights after the government and its contractors unceremoniously wiped out his 70 foot high “Ed Ruscha Monument” in downtown Los Angeles. Karish and Bjorgum attorneys assisted in obtaining a public settlement under the obscure Visual Artists Rights Act was more than five times the next largest settlement under that law. The case has re-energized the public art community in Los Angeles.

2.    Baum v. Marder: This case involved a dispute amongst ostensible co-authors of the famed “Letters from a Nut” series of books, which are widely rumored to be written by Jerry Seinfeld. Karish & Bjorgum lawyers represented the Defendant, Barry Marder. Even though he was sued, Mr. Marder walked away with all copyrights in the books and the trademark rights in its principal character that have allowed him to publish three more books, sign multiple production deals and develop a thriving Internet business — all with intellectual property that had lain fallow for years because of a soured personal relationship.

3.     “Ring of Fire” Investigation: Following the death of Johnny Cash’s first wife, Karish & Bjorgum lawyers were enlisted to investigate the writing of “Ring of Fire.” Their findings were detailed in the epilogue to the paperback edition of Vivian Cash Distin’s posthumous biography “I Walked The Line.” Though the investigation cast doubt on the traditional “Ring of Fire” story, no formal legal action was taken, as the benefits of such action would have been outweighed by familial turmoil. This is an instance of Firm attorneys putting the overall interest of the client ahead of immediate financial gain and notoriety.

4.     Edward Colver Representation: Firm attorneys have represented underground rock photographer and controversial artist Edward Colver as he has fought to solidify his legacy amidst a sea of illegal copying and misunderstanding of his work. Since obtaining the services of Firm lawyers, Colver has stopped copying of his work by a major shoe company, has developed a relationship with a noted gallery and has launched a provocative brand of clothing. Key to this success was the initial legal protection of Colver’s rights and an overall understanding of the underground music community.

5.     Str8t Up, Inc.: In a very recent success, client Str8t Up, Inc. has had its first offering (“Alaskan Bush Pilots”) picked up for production by The History Channel. Firm lawyers operated in association with other counsel to review contracts from a fresh, non-industry and pro-intellectual property perspective. Oftentimes, typical Hollywood contracts that have been passed down through generations of attorneys can benefit from a fresh review–especially by attorneys who are not beholden to the studios or the “talent” for their livelihood.

September 23, 2018
Enforcing IP: Privileges and Anti-SLAPP Practice

As intellectual property litigators, the attorneys of Karish & Bjorgum often run into issues involving allegations of wrongful conduct arising from enforcement of intellectual property rights. This issue can arise when notification of a suit is sent to the trade or even when a cease and desist letter is sent. Sometimes the defendant of the suit or the recipient of the letter will retaliate with a lawsuit claiming malicious prosecution, abuse of process, interference with contract or some other tort allegedly based upon the underlying dispute.

The response to such a counterclaim is often a motion to dismiss based upon First Amendment principles and/or a so-called “anti-SLAPP” (“strategic lawsuit against public participation”) motion. Many states have anti-SLAPP statutes, which are intended to allow quick dismissal of claims arising from activity protected under the Constitution. The prototypical anti-SLAPP situation involves an individual speaking out about a “public issue” (such as at a city council meeting) and then being sued for defamation in response. The goal of the person or company bringing suit is not to win but to distract and wear down the speaker. However, in addition to obvious situations such as public meetings, activity protected under the anti-SLAPP statute often includes lawsuits, good faith threats of lawsuits and cease and desist letters.

Anti-SLAPP statutes usually have strong tactical advantages for the movants. In California, filing such a motion immediately stays fact discovery, provides a mandatory award of fees for the successful movant, and allows for an immediate right of appeal if unsuccessful. However, once beyond the vanilla state court case, the anti-SLAPP terrain becomes exponentially difficult, and many federal litigators miss this issue altogether. For instance, under the Erie doctrine, only some of these procedural advantages apply in federal court. However, the First Amendment and federal Noerr-Pennington doctrine can be used to obtain similar results. And California has passed statutes to limit the application of the anti-SLAPP statute, as well as special rules for “SLAPP back” cases.

Attorneys at Karish & Bjorgum have been involved in many novel applications of the anti-SLAPP statute and Noerr-Pennington doctrine.

Representative cases include:

MM&R, Inc. v. Stitch n Genius, LLC (USDC, Central District of California): Interpreting Federal Circuit precedent, federal court held that California’s anti-SLAPP statute applies to counterclaims based upon letters notifying the trade of patent rights and lawsuit.

Gallagher v. Moon (L.A. Sup. Ct.): State Court granted anti-SLAPP motions of landowner’s wife and tenant in case based upon alleged wrongful execution of judgment on real property.

Sosa v. DIRECTV (9th Circuit): Federal court of Appeals held that Noerr-Pennington doctrine applies to RICO and state law claims against DIRECTV, based upon its efforts to curb piracy of access cards.

DIRECTV cases (various Federal Courts): U.S. District Courts in Georgia, New York and Michigan held that local anti-SLAPP statutes or Noerr-Pennington doctrine applied to attempts by DIRECTV to settle infringement disputes with subscribers.

Mattel, Inc. v. Christian (California Court of Appeal): In a rare reversal of anti-SLAPP motion granted against large company, the California Court of Appeal holds that Mattel, Inc. stated defamation claims based upon statements made to tabloid television show regarding earlier case.

So, if you are a holder of intellectual property rights wishing to begin an enforcement campaign — or if you have already threatened in response to such a campaign or feel that another company is wrongfully pursuing its own intellectual property rights against you — you may need to obtain legal advice on the scope of protected speech. If you have been sued for such conduct, you may be entitled to fees and a quick dismissal. Contact Karish & Bjorgum for further consultation.

September 23, 2018
Karish & Bjorgum Substitutes In, Obtains Victory In Trademark Infringement Trial

Los Angeles, CA — On behalf of firm client Anhing Corporation, Karish & Bjorgum has obtained a jury verdict finding that Anhing’s former supplier engaged in willful trademark infringement of Anhing’s federally registered MY-THO trademark. Karish & Bjorgum was brought in just a few weeks before the federal trial date.

Anhing imports over 3,000 different food products from Asia, including many of its own brands. It has been using the MY-THO trademark since 1980 on its rice noodle and rice paper products. MY-THO was one of the first food brands created by Anhing founder Henry Ly after his 1980 arrival in Los Angeles following escape from Communist Vietnam. Anhing alleged that Defendant Thuan Phong Company began producing infringing products around 2010, after serving for years as a manufacturer of a different Anhing branded rice product.

The federal jury rejected Thuan Phong’s contention that, because its products are made in the Vietnamese city of “MỸ THO,” it was engaged in a fair use of the MY-THO registered mark. The jury further found that Anhing has protectable trade dress in its product packaging and rejected Thuan Phong’s counterclaim of false advertising.

Even though the firm was a late arrival, Karish & Bjorgum quickly got up to speed, preparing and successfully arguing a last-minute motion for summary judgment and attending depositions of numerous newly identified witnesses. The firm’s trial team consisted of founding partners Eric Bjorgum and Marc Karish, assisted by co-counsel Jeffrey Kobulnick of Ezra Brutzkus Gubner LLP.

The result further confirms Karish & Bjorgum’s core belief that expertise in intellectual property prosecution is an invaluable tool for successful litigation.

Anhing will soon be filing its post-trial motions for requesting a permanent injunction and attorneys’ fees.

September 19, 2018