Blinking Irony — Blink 182 takes opposing stances on IP infringements

Posted by | August 13, 2011 | Disputes, General | One Comment


Apparently, even though rock band blink-182 is cool with its fans sharing its music in homemade music videos posted to YouTube, it is NOT OK with its fans selling infringing (aka counterfeit) merchandise.  Surprised?  I’m not.

In last week’s Geekview (weekly IP review), I briefly mentioned blink-182’s new video, Up All Night.  The video is a montage of blink-182 fan’s music videos that were posted to YouTube using the band’s music without the band’s authorization.  As I try to explain more often than I’d like, pairing music with a video is a performance right that is covered by mechanical licensing.  Such licenses usually may be obtained directly through the band or through the Harry Fox Agency.  This license is different and separate from the rights that bands license when they authorize their music to be recorded and shared.  And no, just because a band allows you to record and share their music, does not necessarily mean that they don’t care if you pair it with your ever-so-cool homemade music videos that you love to put on Facebook.  Yeah, sure, it might mean that, but you better ask them just to be safe.

But, back to blink-182’s Up All Night video.  The video, which was posted to YouTube by ShareATT on August 2, 2011, begins with the following explanation:

To launch our first single in eight years, AT&T helped us search YouTube for every instance of fans using our music, without our permission, and rewarded them for it.  The following is made out of clips from all those videos.  Thanks for being a fan.

The blink-182 Film Festival You Didn’t Know You Entered

Presented by AT&T

Pretty flippin’ cool!  Apparently, blink-182 appreciates the exposure, just as one friend of mine assures me “all bands who put their music on The Archive do.”  I don’t think the latter is true, and I keep telling him to send a quick e-mail to a couple of his favorite bands to specifically ask for permission to use their live recordings with the videos he puts on line.  I really see no harm in asking, especially when the answer is no if you don’t ask.

Ah, but I have deviated again.  Sorry!

So, on the very same day that blink-182 released its Up All Night fan montage video on YouTube, “rewarding its fans for copyright infringement,” it also filed a federal trademark infringement lawsuit against John Does 1-100, Jane Does 1-100 and XYZ Company in US District Court for the District of Massachusetts.  Yup, blink-182 filed a lawsuit against a bunch of unknown people whom the band expected to infringe upon the BLINK-182 mark when it performed in Mansfield, Massachusetts on August 9, 2011 (and, yes, it was right!).

The suit alleges that the BLINK-182 trademark used by the musical group of the same name has been used in connection with its musical performances and recording for nearly 20 years, as well as on merchandising and related goods from which the band realizes “substantial income.”  The group has two U.S. federal trademark registrations (here and here) for apparel, sound recordings, audio-visual recordings, toy figures (Really!) and entertainment services.  The suit alleges that the group has a decidedly strong and loyal fan base among those who attend popular music concerts.  In fact, the suit says blink-182 is so popular that many of its upcoming shows have sold out already.  Given the band’s popularity, infringement is anticipated.

The suit seeks 3 remedies:

(1) Preliminary and permanent injunctions prohibiting the defendants from manufacturing, distributing, selling, offering for sale, holding for sale or advertising any goods bearing the trademark or any variation or imitation thereof, or from representing that any goods manufactured, distributed, sold, held for sale or advertised by them as sponsored or authorized by blink-182 in Massachusetts or any other federal district in which this order may be enforced by Plaintiff;

(2) That the court orders the United States Federal Marshal, or the state or local police or sheriff, or authorized agents of plaintitff to seize and impound the unauthorized merchandise; and

(3) That defendants provide for destruction any and all unauthorized merchandise and pay to plaintiff damages in an amount to be determined, along with Plaintiff’s fees and costs and other relief the court deems to be just and proper.

According to the Declaration filed in support of blink-182’s Motion for Preliminary Injunction after the band played in Massachusetts, the band seized over 1000 bootleg T-shirts and other items of merchandise since the original order issued.  Most of the t-shirts that were seized were identical or nearly identical to each other, and most of the bootleggers selling the infringing merch seem to travel from show to show.  They routinely give fake names, claim to have no ID, and drop their infringing merchandise before running away when approached by enforcement personnel.  Based on this, the band sought a preliminary injunction for the duration of its tour effective on all people upon whom service of process is made.  The Court granted this nationwide injunction on August 11, 2011, enabling law enforcement or blink-182 agents to seize and impound any unauthorized merchandise bearing any of the band’s marks from 6 hours prior to each show to 6 hours after it, within a ten mile vicinity of the venue at which the band is performing.

Interestingly, yesterday I wrote about Phish, who obtained a similar preliminary injunction order on June 1, 2011 from the Southern District of New York covering all of its summer tour dates.

Just because a band (or brand) seems cool with allowing certain things that otherwise would be infringing, does not mean it is free-for-all with the band’s IP portfolio.  On the very same day that blink-182 “rewarded its fans for copyright infringement,” it sued them for trademark infringement.  Go figure!  It just goes to show, better safe than sued.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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