Entertainment Law Update Podcast, Episode 10

Replicas, trademark, copyright, etc.

Star Wars: the Court of Appeal strikes back – International Law Office

Stormtrooper Replicas: Final Strike By British Court of Appeal

Stormtroopers In The Courtroom — earlier post by Tamera:

http://ipandentertainmentlaw.wordpress.com/2008/04/08/storm-troopers-in-the-courtroom/

• LucasFilms won a $20 million judgement in a U.S. court in 2006 against British prop designer, Andrew Ainsworth, for copyright and trademark infringement of the Star Wars’ “Storm Trooper” design.
• Andrew Ainsworth, sculpted the Stormtrooper helmet for the first “Star Wars” movie in 1977. Ainsworth now sells replicas of the helmets and armor “casted from the original molds.”
• In 2008, the case moved to the UK, where LucasFilms sought to enforce the $20 million dollar judgment. Ainsworth countersued, claiming he owns the copyright and is entitled to a portion of the $24 Billion in “Star Wars” merchandising revenue.
• In January 2010, a UK court of appeal dismissed LucasFilms' appeal on all points. The UK court found the helmets did not qualify as sculptures under British Copyright law.
• Is attempting to enforce a U.S. judgement in the UK forum shopping?

• Different outcome in US?

“Bob's Big Boy” Statue gives rise to a suit against former franchisee

Big Boy Restaurants International, LLC v. Schoenbaum; filed Feb 25, 2010

FILM

• What is protectable?
  • themes? (Dances With Wolves, Pocahontas)
  • plot? (Terra Incognita)
    • Fox has given us this statement on the lawsuit: “James Cameron wrote the story for ‘Avatar' two years before Mr. Malak claims he wrote his work, and therefore ‘Avatar' cannot be based on ‘Terra Incognita.' We are confident that the lawsuit will be decided in our favor.”
  • legends?
  • specific images? (Timespirits)
  • bits and pieces of ideas in other films?
• Probably a no go on all of these – idea/expression dichotomy, originality requirement, etc.

Also, issues of common origin, idea v. expression, etc.

Scenes a faire: In copyright law, a principle in whicih certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre. Where there;s a limited range of expression possible, those limited forms will not be protected.

Idea/Expression dichotomy: Ideas and concepts are not protected by copyright law.

At root, isn't this: “Man assimilates with foreign culture, falls in love, and joins with his new “family” to fight against his native culture in an epic battle of good vs. evil”

What about Hurt Locker Lawsuit?
Sarver v. The Hurt Locker, LLC, complaint filed 3/2/2010 in New Jersey District Court – Complaint

http://www.examiner.com/x-18039-Capital-District-Movies-Examiner~y2010m3d9-Avatar-and-The-Hurt-Locker-both-attract-ripoff-lawsuits

Speaking of common origin, ideas, etc:
Denizen, LLC v. Mindshare Entertainment, LLC.

Kareem Abdul-Jabbar sues producer for botching documentary–The Hollywood Reporter | Esq. | Entertainment and Media Law
Union/OSG LLC v. William P Zagger et al
Removed from the Superior Court of CA, Los Angeles County, to US District Court, Central District of California on March 1, 2010. http://www.courthousenews.com/2010/02/01/24239.htm

• Kareem Abdul-Jabbar is suing the film production company he hired to create a 90-minute film based on his book “On the Shoulders of Giants: My Journey Through the Harlem Renaissance” in time to be considered for Sundance Film Festival for $1 million.
  • When an untimely rough cut was handed over, “the producers also allegedly had failed to obtain legal clearances for use of the materials” such as music clips and photographs.
  • Because the film wasn't finished, it can't be distributed or shown at the NBA Hall of Fame or All-Star events.

• John Paul Jones, Led Zeppelin bassist, formed a new band, but had a hard time coming up with a name, eventually settling on Them Crooked Vultures.
  • “Think of a great band name and Google it, and you'll find a French-Canadian jam band with a MySpace page.”
  • Establishing an identity for a band works differently in the digital age:
    • Almost no time required to create a profile online and upload music
    • Downloads may create jurisdiction
    • More comprehensive name searches can be done online
    • Using common words requires coexistence?

Triumph v. Sony

First Amendment and the Press

• California's First District Court of Appeals reversed the lower court, holding “that the First Amendment gives publications wide latitude to publish feature spreads next to advertisements that may be distasteful to those being profiled.”
  • 186 indie musicians were spotlighted with a Camel cigarettes ad spread, so they sued for “unauthorized use of artist names for commercial advantage.”
  • The District Court concluded that the indie promotion was “inextricably entwined” with the Camel ad, which would put a lot of content in danger of being categorized as commercial speech warranting less First Amendment protection.
  • Rolling Stone was not “engaged in the production, distribution or sale of cigarettes,” but simply the medium that is used by commercial speakers to distribute commercial messages. The easily discernible beginning and end of the ad and the lack of clear and convincing evidence presented to prove actual malice and an injury were other reasons for a clear reversal.

Suit over use of “Route 66” to name porn project

Roxbury Entertainment, Inc. v. Penthouse Media Group, Inc, et. al December 18, 2009 Judgment

AMEC/ACC Newsstand powered by Lexology – Roxbury Entm’t v. Penthouse Media Group Inc.

• The Central District of California held that if a mark underlies an artistic work, “the First Amendment is a complete defense to Lanham Act claims.” Summary Judgment was granted for Penthouse.

• Facts: Roxbury, owner of the mark ROUTE 66 for the 1960's TV show, and other entertainment media, sued Penthouse for trademark dilution after they started selling DVDs of pornography as “Route 66.”
  • Penthouse claimed this title was protected by the First Amendment as free speech.

• Court relies heavily on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
• Holding: The court used the Rogers balancing test and concluded that Penthouse's use of “Route 66” was protected by the First Amendment.
  • The first prong of the Rogers test requires more than zero artistic relevance which Penthouse showed because part of the film's setting was a roadside motel. This tenuous connection was enough.
  • The second prong of the Rogers test requires the court to evaluate whether consumers would be misled about the source or content of the work. The court found that consumers would not be misled to think that Penthouse's use of “Route 66” was affiliated with with the 1960's TV series.

This decision continues the line of entertainment cases that have developed in the last twenty years making clear that creators of artistic works should be relatively unrestricted in choosing titles for their works. So long as the creator can show some artistic relevance of the mark to his/her work, and so long as nothing about the use is explicitly misleading, the First Amendment will provide a defense to what might otherwise be an infringing trademark use.