Guide Through the Legal Jungle

What the Jersey Boys TV Clip Case Teaches Us about Fair Use

Background

Dodger Productions and Dodger Theatricals (“Dodger”) produced the musical Jersey Boys, a historical dramatization about the musical group, the Four Seasons, and the lives of its members. The musical uses a seven-second clip from a 1966 episode of The Ed Sullivan Show.

SOFA Entertainment owns the copyright in all the episodes of The Ed Sullivan Show as part of its film library which SOFA licenses for a fee. Dodger obtained no license and paid no fee for its use of the clip. SOFA sued for copyright infringement. The court decided that Jersey Boys use of the clip qualified as a fair use and SOFA lost the lawsuit. Not only did SOFA lose the lawsuit, but SOFA lost the lawsuit in a big way!

You can read the 9th Circuit decision in SOFA Entertainment v. Dodger Productions here.

How Jersey Boys Uses The Ed Sullivan Show Clip

Specifically, the seven second clip shows host, Ed Sullivan, introducing the January 2, 1966 performance of the Four Seasons. That 1966 appearance on The Ed Sullivan Show was a turning point for the Four Seasons. During the musical production, the clip plays on a screen while one of the live-stage actors tells the audience about the relevance of that television appearance. After the seven-second clip finishes, the live-stage actors perform Dawn, one of the Four Seasons’ signature songs.

Lesson One – Short, Transformative Uses Are Likely to Be Fair Use

I am a believer in strong copyright laws that protect copyright owners. I also believe that the court was correct to characterize Jersey Boys use as a fair use. My reasons for agreeing with the court’s fair use determination include the following:

• the clip was short (only 7 seconds)
• the use of the clip made a historical point
• the clip was not utilized purely for its entertainment value
• the specific clip was one of the few clips that could fulfill the purpose for which Jersey Boys used it

Lesson Two – Overreaching Rights Owners Can Get Smacked Down

While I am a proponent of vigorously enforced copyright laws, I also recognize that some copyright owners can be over-aggressive bullies and bring copyright infringement claims that have no merit. Apparently, the California federal courts think so too. The courts ruled that because SOFA’s copyright infringement claim against the Jersey Boys clip use was objectively unreasonable, SOFA would have to pay the Dodger’s attorneys’ fees and costs (a whopping $155,000). A significant factor in the court’s decision was that SOFA was sophisticated and knowledgeable about copyright infringement, had been involved in similar lawsuits, and should have recognized the Jersey Boys use as a fair use.

Lesson Three – Unauthorized Uses Frequently Come to the Attention of the Rights Owner

SOFA discovered the use of the clip because a SOFA executive just happened to attend a performance of Jersey Boys. A cautionary tale for producers who are counting on their unauthorized use of other people’s material going unnoticed.

Court Decision about Songs Based on Pi Illustrates What Is and Isn’t Copyrightable

Copyright Does Not Protect Everything

For example, copyright law does not protect raw ideas. It only protects the way in which those ideas are expressed or developed. Unfortunately, separating the “idea” from the “expression of the idea” is often subjective and not necessarily intuitive. That’s why it’s helpful to have real life examples like the recent decision in the PI music copyright infringement lawsuit.

Musicians Slinging Pi

Pi is a mathematical constant that is the ratio of a circle’s circumference to its diameter. The first six numbers of pi are 3.14159. Composers Michael Blake and Lars Erickson independently assigned a number to each note of a musical scale and then constructed a melody by playing the notes in the order of the digits of pi.

Composer Michael Blake published on YouTube and elsewhere a recorded composition entitled “What Pi Sounds Like”. Erikson, who had previously created a composition entitled “Pi Symphony”, sued Blake for copyright infringement.

The Court Finds No Infringement

The court dismissed the lawsuit finding that both composers had simply created a composition based on the same idea. The idea was transcripting pi to music. There is no copyright infringement just because one composer uses the ideas of another composer. Infringement exists only if one composer copies the manner in which another composer expresses the idea and the two compositions end up being identical or substantially similar. For Blake and Erikson, the court found that the two pi compositions differed distinctly in areas such as rhythm, tempo, musical phrasing, and harmony.

Copyright also recognizes that for some ideas – such as the idea of putting pi to music – there are a limited number of ways in which to implement or express that idea. As a result, expressions of that particular idea – even if created completely independently from one another – may share some basic similarities.

Listen for Yourself

You can listen to both pi compositions yourself to determine how similar and distinct they are. Michael Blake’s “What Pi Sounds Like” is here. You can listen to movements from Lars Erikson’s “Pi Symphony” here and here.

Should Attorneys Get Copyright Protection for Documents Filed in Lawsuits?

Two attorneys have filed a copyright infringement lawsuit against Westlaw and LexisNexis for selling copies of the pleadings and other documents attorneys submit during court proceedings. The case is White v. West Publishing Corp. (S.D.N.Y., filed Feb. 22, 2012). You can read the complaint here.

Curious but Little-Discussed Aspect of This Case

What I find most curious about this lawsuit which seeks class action status is its inclusion of works that have no copyright registration. According to the complaint, Subclass R consists of those attorneys who have registered the copyright in their pleadings and Subclass NR consists of those attorneys who have not registered the copyright in their pleadings. The overwhelming majority of attorneys do NOT register the copyright in documents they file with a court.

The lack of copyright registrations is a problem. Under current law, you have a valid copyright as soon as your work is “fixed in a tangible medium of expression”. That’s copyright law speak meaning you have a valid copyright as soon as you write or record your work. Hence, copyright registration is not necessary to have rights in your work. However, copyright registration is required before you can file a copyright infringement lawsuit. That seems to mean that the claims for any attorneys in Subclass NR can be easily dismissed. If there is any exception to the registration-before-lawsuit requirement for class action cases, I am not aware of it.

Other Commentary about Copyright Protection for Lawyers’ Briefs

There has already been much discussion about the attorneys’ chances in the White v. West Publishing Corp. Some commentators believe the lawsuit to be frivolous and predict the attorneys will be laughed out of court. The Voloch Conspiracy blog offers a more even-handed analysis of whether Westlaw and LexisNexis’ use of the brief qualifies as copyright infringement.

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 American 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.