Guide Through the Legal Jungle

NBC Harry-Potter Lawsuit Raises Copyright-Font Issue

A while ago I blogged about copyright protection for fonts, the risks of using font exchanges, and a client’s pursuit of a font license for use on a company logo. The client story had a happy ending.

I don’t see tons of font copyright issues in my entertainment and intellectual property law practice. They are apparently on the rise. The P22 Type Foundry just sued NBC Universal for using P22’s Cezanne font software to create various Harry Potter merchandise. The Hollywood Reporter offers an interesting article about the lawsuit.

Brief Analysis of Google Book Settlement Rejection

A New York federal court has rejected the class action settlement agreement negotiated between Google and members of the publishing industry. The settlement agreement with its attachments runs 300+ pages. I did a 10-page annotated summary of the proposed Google Book Settlement Agreement which you can find here. While my annotated summary prepared in mid-2009 does not incorporate the November 2009 amendments, it still provides a good overview of the settlement agreement’s complexity.

Perhaps the most significant language of the 48-page opinion is on page 46 when Judge Denny Chin writes “ . . . many of the concerns raised in the objections would be ameliorated if the [settlement] were converted from an opt-out settlement to an opt-in settlement.” Judge Chin discussed numerous objections to the settlement:

1. Notice to Members of Class Is Adequate. Judge Chin concluded that the class received adequate notice of the settlement. The settlement applies to anyone who has a copyright interest in a book that was published on or before January 5, 2009. I know many authors who were unaware of the settlement or unaware of its significant impact.

2. Class Representation Is Not Adequate in All Respects. The named plaintiffs in the class action are the Authors Guild, the Association of merican Publishers, McGraw-Hill Companies, Simon & Schuster, John Wiley & Sons, and five individual authors. Judge Chin concluded that the interests of these named plaintiffs are not always consistent with the interests of all authors and publishers in the class who would be affected by the settlement.

3. Scope of the Settlement Is Too Broad. This lawsuit started as a result of Google digitizing books and posting snippets of those books in search results. In addition to allowing the continued posting of snippets, the settlement would in many cases authorize Google to sell and merchandise complete books without direct authorization from copyright owners. The settlement would also release Google from other potential author and publisher claims that were not the original focus of the lawsuit. Most troubling, the settlement gives Google a work-around for orphan works, a task more appropriately left to Congress which has considered orphan works legislation in the recent past.

4. The Settlement Is Inconsistent with Copyright Law. It is the copyright owner’s exclusive right to determine who may use his work. A copyright owner’s silence or inaction can not be deemed to be consent or permission to use the copyright owner’s work. Yet, this would be the result of an opt-out versus opt-in Google settlement agreement.

5. The Settlement Raises Antitrust Concerns. The settlement would give Google a de facto monopoly over orphan works and other unclaimed works. While Google would have millions of scanned books in its database which Google could use for commercial purposes, Google would not be generous about sharing that database with other commercial users.

6. The Settlement Raises Privacy Concerns While Google would be able to collect significant data about what and when people read, Judge Chin did not see privacy issues as “a basis in themselves to reject the proposed Settlement”.

7. The Settlement Raises International Law Concerns The class includes non-US works that were registered with the U.S. Copyright Office or that were published in Canada, the United Kingdom, or Australia, on or before January 5, 2009. Subjecting foreign authors and publishers to the terms of the Settlement may violate provisions of the Berne Convention and other international copyright treaties.

In conclusion, Judge Chin found that the settlement was not fair, adequate, and reasonable. You can read the entire opinion here.

Seinfeld Case Emphasizes that Opinions Are Not Defamatory

I have previously blogged about the copyright infringement and defamation lawsuit against Jessica and Jerry Seinfeld filed by Missy Chase Lapine here and here.

From the start, I believed Lapine’s defamation claim against Jerry Seinfeld was stronger than her copyright infringement claim against Jessica Seinfeld’s cookbook. However, in the end, the court dismissed both the copyright and defamation claims. The defamation dismissal just took a little longer.

Basis of Seinfeld Defamation Claim

The defamation claim arose from comments Jerry Seinfeld made during an October 2007 appearance on the Late Show with David Letterman.

In the complaint she filed to initiate the defamation lawsuit, Lapine originally accused Seinfeld of characterizing her as a stalker, assassin, and mentally ill person. Interestingly, Lapine changed her defamation argument during the course of the lawsuit. Perhaps because the court said the transcripts and recordings from the David Letterman Show clearly demonstrate that Seinfeld did not make the statements that the complaint attributed to him.

In the court papers Lapine later filed to oppose Seinfeld’s dismissal motion, Lapine based her defamation argument on the fact Seinfeld said "that Lapine had fabricated opportunistic allegations of plagiarism against his wife." The problem for Lapine with this second argument is that Seinfeld's statement qualifies as an opinion.

Opinions Are Not Defamatory

A statement of opinion is constitutionally protected and can not be defamatory. However, merely labeling a statement as opinion does not automatically insulate the statement from being defamatory. For your statement to qualify as an opinion, your audience must realize that your statement is not meant literally.

In Seinfeld’s case, the court said it was inconceivable that a reasonable person would believe that Seinfeld's statements were conveying facts about Lapine. Seinfeld, a well-known comedian, made the statements in question primarily on the Letterman show, a late-night entertainment program, during a comedic interchange between Seinfeld and Letterman. His comments were statements of his opinion about the lack of merit of Lapine’s lawsuit and were, therefore, not actionable.

Senate Candidate Robin Carnahan’s Legal Battle with Fox

An ad for Robin Carnahan’s U.S. Senate campaign uses about 30 seconds of Fox News Network footage from reporter Christopher Wallace’s interview with Roy Blunt. Blunt is Carnahan’s opponent for the Missouri seat in the U.S. Senate. Fox filed a lawsuit against Robin Carnahan for Senate, Inc. on September 15 with three claims:

Fox Claims that Carnahan Infringed the Copyright in the Fox News Footage

The Carnahan campaign has a credible fair use defense. The commercial provides political commentary, uses under 30 seconds from the interview; and should have little negative impact on Fox’s ability to continue marketing the footage.

Why Paris Hilton Won Her Lawsuit against Hallmark?

  Well, okay, Paris Hilton didn’t technically win the lawsuit. The parties settled – but only after Hallmark failed in its attempts to get the lawsuit dismissed. The terms of the settlement have not been disclosed. However, my bet is Hallmark made a monetary payment or other concessions to Hilton even though it’s doubtful that either party admitted wrong-doing.

What Did Hallmark Do?

Hallmark released a birthday card with an image of Hilton’s head super-imposed on a cartoon waitress’ body. The card has the words “That’s hot”, a catch-phrase Hilton often used in the reality tv show, Simple Life, and for which Hilton holds a trademark registration. In fact, the card re-creates a well-known scene from Simple Life.

Hilton sued Hallmark for violation of her right of publicity and other claims. I believe the right of publicity violation was Hilton’s strongest claim. To win a right of publicity claim, Hilton needed to demonstrate that her identity has commercial value (not hard for Hilton who licenses her name and persona for various products) and that Hallmark used her identity without her consent for commercial purposes.

Hallmark’s Defense

Hallmark’s defenses to Hilton’s right of publicity claim included transformative use and the public interest defense. Hallmark could not convince a 9th Circuit court to dismiss Hilton’s lawsuit on the basis of either defense. I’ll discuss the transformative use defense in greater detail.

When you transform a celebrity likeness, you add enough creative elements to the im¬age to express something new. If you are expressing something new with the celebrity’s image, the First Amendment protects your right to use the celebrity’s image. For example, a right of publicity lawsuit in which the transformative use defense succeeded involved Artist Rick Rush’s depiction of Tiger Woods in the visual artwork, The Masters of Augusta. 

Hallmark Card Not Sufficiently Transformative

The court did find differences between Hilton’s appearance in the Simple Life episode and the Hallmark card:

• Hilton’s uniform is different.
• The style of the restaurant is different (drive-through service rather than sit-down service).
• The food is different (burgers-and-fries rather than diner-style bacon and eggs).
• The card uses a cartoon drawing of Hilton’s body rather than a picture of Hilton’s real body.

Those differences were just insufficient for dismissal of Hilton’s lawsuit. In the court’s view, the basic settings of the card was the same as the Simple Life scene: Paris Hilton, born to privilege, working as a waitress.

Spawn Comic Book Illustrates Why Collaborators Need Written Agreements

If you are someone who creates, you may enlist other people to assist with your creative endeavors. Contributors and collaborators can take the form of illustrators, editors, indexers, consultants, researchers, background musicians, recording engineers, and others.

If you do not intend your collaborators and contributors to share ownership, you should clearly communicate your intentions and, most importantly, put your intentions into a written agreement. If you plan to share ownership of the creation, you and your collaborators should still have a written agreement which addresses ownership, creative control, division of costs and profits, and other issues.

Bad Things Happens When There’s No Written Agreement

The lawsuit over Spawn has been ongoing for about ten years. It all started when Todd McFarlane, the creator of the Spawn comic-book series, retained Neil Gaiman as a writer. Gaiman described and wrote dialogue for three Spawn characters: Medieval Spawn; Angela; and Count Nicholas Cogliostro. McFarlane then illustrated the characters.

McFarlane and Gaiman had no written agreement. Later, Gaiman claimed joint ownership in the copyright to the characters. The court agreed that Gaiman was a joint copyright owner since Gaiman had provided details for the characters including name, age, facial features, title, manner of speech, costume, and what each character knows and says. That ownership decision was made in 2004. The legal proceedings continue to determine Gaiman’s portion of the profits for the posters, trading cards, clothing, statuettes, animated series on HBO, video games, etc. that feature the three characters.

In another decision issued a few days ago, the court ruled that Gaiman also has a copyright and financial interest in three additional Spawn characters: Domina, Tiffany and Dark Ages Spawn. Although Gaiman did not directly participate in the creation of these three new characters, the court found that Domina, Tiffany and Dark Ages Spawn characters are derived from the characters, Medieval Spawn and Angela, which Gaiman did co-create.

Video Game Look-alikes? Boomshine Versus ChainRxn.

Thanks to GamePolitics.com for highlighting the video game copyright infringement case, Miller v. Facebook.

Background

Daniel Miller is the creator of the video game Boomshine, a game played over the Internet using Adobe Flash. Boomshine features colorful swirling dots that the player tries to obliterate through a chain reaction of explosions. After introducing Boomshine, Miller discovered a very similar game being offered on Facebook entitled ChainRxn.

Miller filed a lawsuit against Facebook for contributory copyright infringement and against Yao Wei Yeo, the developer of ChainRxn, for direct copyright infringement. Miller claims Facebook assisted Yeo in distributing infringing copies of ChainRxn since Facebook users could access ChainRxn through Facebook and ChainRxn was included in the Facebook Application Directory.

Facebook’s Failure to Respond to DMCA Take-Down Requests

What surprises me is Facebook’s failure to avoid this lawsuit through the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). The DMCA insulates online sites – like Facebook – from claims of copyright infringement for material posted by third parties. One requirement for the DMCA protection is removing infringing material upon the request of the copyright owner. Hence, sites are normally responsive to takedown requests.

So I’m puzzled as to why Facebook refused to remove ChainRxn when Miller made the takedown request. Of course, the DMCA has strict requirements and if Miller did not include the required information in his takedown request, Facebook could just ignore it.

The Hard-to-Find Defendant

Evidently, ChainRxn developer, Yao Wei Yeo, is not easy to locate. If Miller does not locate and serve Yeo with the lawsuit by July 30, 2010, his case against both Yeo and Facebook will be dismissed.

Resolution of Seinfeld-Lapine Cookbook Lawsuit

I blogged about the Seinfeld-Lapine cookbook spat when Missy Chase Lapine, author of The Sneaky Chef, first filed a copyright and trademark lawsuit against Jessica Seinfeld, author of Deceptively Delicious and wife of comedian Jerry Seinfeld. My predictions for the case came true. I love when that happens!

Courts Grant Summary Judgment to Seinfeld on Copyright and Trademark Claims

First, the court confirmed that hiding vegetables in foods children enjoy is a basic idea and copyright does not protect basic ideas. Copyright infringement requires substantial similarity and the court found none between The Sneaky Chef and Deceptively Delicious. Lapine argued that the cookbooks have a similar organization, pattern, structure, and sequence in that both books have

• a cover and title conveying a concept of secretly getting children to eat healthy foods
• an introduction or forward by a doctor
• a personal narrative by the author describing her struggle, revelation, recipe testing and effects
• a discussion of appliances
• a list of essential ingredients
• instructions for making the purees in advance and storing them for later use
• a collection of individual recipes using those foods

However, the court found all these elements to be stock elements of cookbooks (i.e., they are elements one would naturally expect to find in a cookbook) and as such, copyright does not protect them.

The look and feel of the two books also differed in several ways. According to the court:

• Deceptively Delicious lacks the extensive discussion of child behavior, food philosophy, and parenting that pervades The Sneaky Chef.
• The Sneaky Chef uses primarily black, gray, and shades of brownish orange while Deceptively Delicious employs bright colors and more photographs.
• The Sneaky Chef assumes greater familiarity with cooking, recommends thirteen methods for hiding healthy foods, and provides recipes for multiple-ingredient purees, Deceptively Delicious instructs readers about only single-ingredient purees and contains more basic instructions.

The court also made short work of the trademark infringement claim finding that the images used on each of the cookbook covers were not similar.

Court Does Not Grant Summary Judgment on the Defamation Claim

In my previous posting on this matter, I predicted that Lapine’s defamation claims against Jerry Seinfeld for remarks Seinfeld made on the Late Show with David Letterman were actually stronger than her copyright and trademark claims. Note that the court allowed the defamation claim to stand. I don’t know the status of that claim but I would not be surprised if the Seinfelds ultimately prevail on the defamation claim. It’s just going to take longer.

Some Consolation for Lapine

Even though Lapine has lost most of her lawsuit, she can take some consolation that her book is outpacing Seinfeld’s in the marketplace. The last time I checked, Amazon ranked Lapine’s The Sneaky Chef at 1,183 in books and Seinfeld’s Deceptively Delicious at 8,740 in books.

Another Louis Vuitton Lesson on Using Trademarks in Media

Last year, I blogged about "Lessons from Louis Vuitton on the Risk of Unauthorized Product Placements". That dispute featured LV’s objection to the appearance of its products and trademarks in videos and album art for Danity Kane, a group released through Sean Combs’ Bad Boy Records label.

As I’ve previously said when evaluating the risks of using copyrighted and other protected works without permission, one of the factors to consider is whether the rights owner previously objected to similar uses. It is a good bet that rights owners who have been aggressive in protecting their rights in the past will continue to be aggressive in protecting their rights in the future.

Louis Vuitton is proving the accuracy of this principle. Louis Vuitton now has an ongoing trademark lawsuit against Hyundai which showed the LV trademark for about five seconds in its Super Bowl luxury commercial.

While Hyundai probably wants this dispute to disappear quickly, getting a court opinion on the substantive issues would be a boon for media producers and the attorneys who advise them on when and how one can permissibly use product appearances in creative works.

Gaylord v. US, Part Three, Where Copyright Provisions of Government Contract Fell Short

In Part One and Part Two of this blog series, I discussed the copyright fair use and copyright co-authorship aspects of the Gaylord v. U.S. case involving the Postal Service’s issuance of a Korean War Veterans Memorial stamp. In this final part of this three-part blog posting, I’ll discuss the government contracting aspect.

My only familiarity with this case is from my reading of the court decision. From that admittedly limited vantage point, it seems to me that the government could have avoided this situation if it had exercised more care in the drafting and oversight of the government contract with Cooper-Lecky, the general contractor for the Memorial. Instead, the government stepped on a landmine lurking in the copyright provisions of the contract.

The contract between the government and Cooper-Lecky gave the government broad rights in the Memorial including the right to use all elements of the Memorial on any other government design or construction. Such language should resolve the government’s problem with Gaylord’s copyright infringement lawsuit – except that Gaylord was not a party to the government-Cooper-Lecky contract. Cooper-Lecky granted the government all the rights Cooper-Lecky held in the Memorial. However, one cannot grant rights it doesn’t have and Cooper-Lecky evidently did not have sufficient rights in Gaylord’s work on the Column.

From the government’s perspective, Cooper-Lecky should have been contractually obligated to obtain in writing proper rights from everyone who worked on the Memorial project so that Cooper-Lecky could properly convey those rights and permissions to the government. Somewhere along the way, this process broke down. The court opinion suggests that Cooper-Lecky and Frank Gaylord did not start their working relationship with a written agreement addressing the copyright ownership of the Column. As a result, Gaylord and Cooper-Lecky disputed copyright ownership of the Column for years with those disputes finally culminating in a 1994 agreement in which Cooper-Lecky acknowledged Gaylord’s sole copyright ownership of the Column.