X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
The music catalogs that own the rights to the classic Big Band-era tune “Sing, Sing, Sing (With a Swing)” may proceed with their trademark suit over a television commercial for golf clubs that used the words “Swing Swing Swing” over swing-style music, the 2nd U.S. Circuit Court of Appeals has ruled. Noting that the “upbeat syncopation and counterpoint” of Benny Goodman’s version of the song are “as distinctive and recognizable [to swing fans] as the opening four notes of Beethoven’s Fifth Symphony are to a classical music lover,” the three-judge panel found that Southern District of New York Judge Robert W. Sweet erred in dismissing EMI Catalogue Partnership’s lawsuit against the golf club manufacturer, Spalding Sports Worldwide, and the advertising agency Hill, Holiday, Connors, Cosmopulos Inc. “[T]aking in the best light EMI’s argument that the stock swing music adopted would sound similar to the Benny Goodman song in an ordinary consumer’s ear, there are sufficient facts upon which a reasonable jury could conclude that defendants intended, in bad faith, to trade on EMI’s good will in the title of the song by using the phrase ‘Swing Swing Swing’ in the final commercial,” Senior Judge Richard J. Cardamone wrote in EMI Catalogue Partnership v. Hill, Holiday, Connors, Cosmopulos Inc. and Spalding Sports Worldwide , 99-7922. The panel also included Circuit Judge Chester J. Straub and Chief Judge of the U.S. Court of International Trade, Gregory W. Carman, sitting by designation. The dispute has its origins in a commercial commissioned by Spalding in 1997 for its Top-Flite Tour Irons. Hill Holliday’s original mock-up of the 30-second spot began with images of three golfers hitting iron shots, followed by the words “Swing Swing Swing,” while a recording of “Sing, Sing, Sing” played in the background. (The song, written by Louis Prima and made famous by Goodman, has been widely hailed as one of the best-known records of the swing era.) According to the panel’s opinion, after Spalding concluded that the cost of licensing the recording of “Sing, Sing, Sing” exceeded its budget, the final version of the commercial used the same basic visual images as the mock-up, but with stock music in a swing style for the soundtrack. Hill Holliday found the music for the final version of the advertisement by asking a sound studio to look for a “Benny Goodman-type song like ‘Swing Swing Swing’” (incorrectly stating the name of the original song), the opinion said. In June 1998, EMI wrote a cease-and-desist letter to Hill Holliday, arguing that the combination of the phrase “Swing Swing Swing” and music evocative of the famous song would confuse consumers into associating the song and its titles with Spalding’s golf clubs. Spalding refused to pull the commercial and EMI filed suit in November 1998, the opinion said. Judge Sweet ruled in June 1999 that the ad constituted fair use because it did not use the actual song and because the phrase “Swing Swing Swing” described the action to be undertaken by golfers who bought the clubs. But on appeal, the 2nd Circuit ruled that a material issue of fact remains as to whether the use of “Swing Swing Swing” as related to the action in the commercial was indeed descriptive. “While ‘Swing’ is descriptive, ‘Swing Swing Swing’ is not necessarily so,” Judge Cardamone wrote. “The explanation that the word describing the action must be repeated three times to describe the three actors shown hitting golf shots is tenuous when the ordinary term for their action involves the single word ‘swing,’ ‘hit,’ ‘stroke,’ or ‘shot.’ “ In addition, the panel found the lower court improperly analyzed the good faith requirement of fair use by failing to adequately consider whether the use of stock swing music in conjunction with the phrase “Swing Swing Swing” was probative of good or bad faith on the part of Spalding and Hill Holliday. And the panel criticized Judge Sweet for failing to consider any evidence of the defendants’ bad faith, noting that Hill Holliday had requested stock music similar to the famous song for the final version of the ad but had retained the alliterative phrase “Swing Swing Swing.” “We cannot say on a motion for summary judgment that the two pieces of music are so dissimilar, or the commercial so evidently developed in good faith, that no material issue of fact exists,” the panel wrote. “[T]here is evidence in the record pointing to defendants’ both good and bad faith … [that] may, properly weighed, have prevented summary judgment in favor of the defendants on their fair use defense.” EMI Catalogue Partnership and EMI Robbins Catalog were represented by Brendan J. O’Rourke, Charles B. Ortner, William M. Hart and Frank P. Scibilia of Proskauer Rose. Hill, Holiday, Connors, Cosmopulos and Spalding Sports were represented by Marcia B. Paul and Lisa S. Hughes of Kay, Collyer & Boose in New York.

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.