marie-andree@maw-law.com, Author at MAW-LAW Web Site

Three’s Company and Four Fair Use Factors

September 3, 2014 · by marie-andree@maw-law.com ·

The European Court of Justice just released today its Deckmyn judgment, where it defines what a parody is under European Union law. I wrote about it a while ago, and will come back to it. Meanwhile, there is an interesting parody case just here in New York, David Adjmi v. Dlt Entertainment Ltd., 14 cv.0568.

Plaintiff David Adjmi is a playwright, and his plays have been performed at the Royal Shakespeare Company in England, Lincoln Center, and the American Repertory Theather among others. He wrote 3C, an original play parodying the television show Three’s Company, which ran from 1977 to 1984. Defendant DLT Entertainment holds the copyright to Three’s Company. It sent Plaintiff a cease and desist letter in June 2012, asking that the production of 3C, which played Off Broadway in 2012, to be stopped. After the production ended as scheduled in July 2012, a publisher expressed interest in publishing 3C in a book of Plaintiff’s plays, and an another publisher want to prepare an acting edition of 3C, and also license its future productions on behalf of the playwright.

Plaintiff then filed suit in the Southern District of New York (SDNY) on January 30, 2014, seeking a declaration that his play does not infringe DLT’s copyright, and filed an amended complaint in February 25. Defendants filed a counterclaim for copyright infringement against both the playwright and the producers of 3C, claiming that the play is not fair use, but rather is an unauthorized derivative work. The playwright moved for judgment on the pleading, and, on August 25, filed a memorandum of law to support this motion, addressing the four fair use factors.

The doctrine of fair use is codified in the Copyright Act of 1976, 17 U.S.C. §107, and provides an affirmative defense to a copyright infringement claim. 17 U.S.C. §107 lists four non-exclusive four factors , which the courts consider when determining if a particular use of a protected work is fair:

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

A determination of fair use is a mixed question of law and fact, and no factor is dispositive. The memorandum of law argues that the play is a parody, and, as such, is “quintessential fair use.” It cites the Campbell v. Acuff-Rose Music case, where the Supreme Court explained that “the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s work.” As such, parody is speech protected by the First Amendment.

In Three’s Company, Chrissy and Janet are sharing an apartment in Santa Monica with Jack. Although their relationships are platonic, Jack is pretending to be gay as their landlord frowns upon a man being the roommate of two women. 3C also features two women sharing platonically an apartment with a man. However, the man is really homosexual, but has not revealed his sexuality publicly, as he is afraid of people’s reactions. Indeed, his landlord is homophobic. One of the women is a cocaine user and has been in an abusive relationship. The other woman has very poor self-esteem to the point she allows her lecherous landlord to molest her.

The memorandum argues that the play “demonstrates how some of the assumptions and stereotypes on which the superficial comedy of Three’s Company was based were harmful, even toxic, to real people.” Plaintiff stated in his original complaint that, in writing 3C, he “wanted to deconstruct the sunny, silly sitcom visions of Three’s Company and contrast it with the reality of life in the 1970’s for many people.” The complaint states further that “Three’s Company was a light-hearted farce; 3C is heavy and dark” and that that 3C is a parody and thus fair use.

The memorandum addresses the four fair use factors. As for the first factor, the purpose and character of the use, Plaintiff argues that he “altered [Three’s Company’s] characters and invented his own plot for them.” He parodied the television show “to expose and criticize the toxic assumptions about sexuality, gender, and age at the heart [of the show.]” As such, the use of the original work is transformative. In Campbell, the Supreme Court explained that the first factor must aim at determining whether the new work merely supersedes the original work or if the use is instead transformative.

Plaintiff also argued that the second factor, the nature of the original work, should weigh in his favor, albeit he did not elaborate much. It is surprising that Plaintiff did not reiterate there that his work is creative.

As for the third factor, the amount and substantiality of Plaintiff’s use in relation to the original work, the memorandum quoted the Seventh Circuit case Chicago Bd. Of Educ. v.Substance, Inc., where the court recognized that “a parodist has to be able to quote, sometimes very extensively, from the parodied work in order to make the criticism.” It also quoted the Campbell case, where the Supreme Court explained that copying for parodic purpose “does not become excessive… merely because the portion taken was the original’s heart.”

It also cited the Eleventh Circuit‘s Suntrust Bank v. Houghton Mifflin Co. case, which is probably the most permanent case law in that matter. The Eleventh Circuit found the novel The Wind Done Gone, written by Alice Randall, to be fair use, even though it had appropriated characters, plot, and major scenes from Gone With the Wind, as the novel “generally sets out to demystify GWTW and strip the romanticism from Mitchell’s specific account of this period of our history.” The Eleventh Circuit defined parody as a work aiming to “comment upon or criticize a prior work by appropriating elements of the original in creating a new artistic, as opposed to scholarly or journalistic, work.” Plaintiff acknowledged the title of the play refers to the television show, but that he did not copy dialogue and added many new elements,

Plaintiff notes that the fourth factor, the effect on the market for the original work “generally weighs in favor of a parodist,” noting that , if only licensed parody would be permitted, a copyright owner could prevent parody of his work, to the detriment of free expression. A parody does not satisfy the demand for the original, and plaintiff argues his play, which has so far only played for a limited time Off Broadway, does not fulfill the demand for the television show, which is still in syndication.

Image is Ye Olde Doorbell (306/365) by Flickr user derrickcollins, under a CC BY-ND 2.0 license.

CC BY-ND 2.0)

Filed Under: Copyright · Tagged: Copyright, copyright infringement, Fair Use

Sherlock Holmes Will Not Jump the Shark

August 26, 2014 · by marie-andree@maw-law.com ·

Benedict Cumberbatch won an Emmy Award last night for his portrayal of Sherlock Holmes in the BBC series Sherlock and Martin Freeman won an Emmy for portraying Dr. Watson in the same show.

More movies, television series or books featuring the famous detective and doctor are likely to be made in the years to come as the Seventh Circuit decided last June that Sherlock Holmes and Doctor Watson, the famous characters created by Sir Arthur Conan Doyle, are no longer protected by copyright (Klinger v. Conan Doyle Estate, Ltd.,). I wrote about this case for the TTLF newsletter in July.

Sherlock Holmes and Dr. Watson first appeared in A Study in Scarlet, a story penned by Sir Arthur Conan Doyle which was published in 1887 and first released in the U.S. in 1890. This story is thus in the public domain in the U.S. because all work published before January 1st, 1923 are in the public domain in the U.S. However, Sir Arthur Conan Doyle published ten Sherlock Holmes stories, also after January 1st, 1923 and these then stories are still protected by copyright in the U.S.

The Estate of Conan Doyle (ECD) argued in front of the Seventh Circuit that if a “complex” character is protected by copyright, it is thus protected until the last work where the character appear falls into the public domain. The ECD further argued that “flat” characters don’t evolve, but “round” characters do. This argument failed to convince the Seventh Circuit, which decided that the two characters were no longer protected by copyright. The court added, however, that the original elements added in the later stories remained protected. The ECD then petitioned the Supreme Court to accept to review the case, but the Supreme Court denied certiorari (meaning it refused to review the case).

That decision was disappointed for many IP attorneys and scholars, as one of the questions asked to the Supreme Court in the petition was whether “a character that develops dynamically over time is entitled to copyright protection based on the last publication depicting the character’s evolution.” In essence, answering this question by the affirmative would have allowed authors to extend the protection of their characters indefinitely, as long as they would have continued to develop their characters “dynamically” (whatever that exactly means). Mickey would have finally married Minnie. Superman would have started a publishing empire. The Hulk would have created a line of face creams designed to cover greenness.

The art of developing a character is maybe best known by television writers, sometimes to the point of “shark-jumping.” Just imagine Sherlock Holmes in shorts (maybe tweed shorts?), on water skis, and smoking his pipe. Not a happy thought.

The image is Baker Street, London – What’s This? Sherlock Holmes – The Sherlock Holmes Food & Beverages! courtesy of Flickr user Elliott Brown under a CC BY 2.0 license.

Filed Under: Copyright · Tagged: Copyright, Protection of Characters by Copyright, Seventh Circuit, Sherlock Holmes

Seventh Circuit: No Trademark Infringement by a Fictional Product

August 21, 2014 · by marie-andree@maw-law.com ·

I wrote a post this week for The IPKat blog about the Fortres Grand Corporation v.Warner Bros. case no. 12-cv-00535.

The Seventh Circuit affirmed the district court’s judgment which had found that Warner Bros. had not infringed the CLEAN SLATE trademark owned by Fortres Grand for computer software. What makes this case interesting is that Fortres Grand was claiming that Warner Bros. had infringed its trademark in its Batman movie The Dark Knight Rises, which includes several references to a fictional software program called “clean slate.”

Image is Don’t waste your college life in a drunken stupor courtesy of Flickr user Waldo Jaquith under a CC BY-SA 2.0 license.

Filed Under: Trademark · Tagged: Likelihood of confusion, Reverse Confusion, Trademark, Trademark Infringement

Billy Cub Has Left the Stadium: Chicago Cubs File Trademark Infringement Suit Over Unofficial Mascot

July 28, 2014 · by marie-andree@maw-law.com ·

The Chicago Cubs sued several individuals last week, alleging that they dressed as “Billy Cub,” a bear wearing a Chicago Cubs’ uniform, while “lurking” outside of Wrigley Field, posing for photographs with the fans, engaging with them “and then seek[ing] to hustle those same fans for “fees” or tips.” Defendants were either working alone or “in combination of approximately four “Billy Cub” characters at the time.” They were carrying a cooler “with a handmade “pics for tips” sign taped to its side.”

The practice of wearing costumes to solicit tips for photo-ops is familiar to anyone who recently passed by Times Square in New York, where individuals dressed as Spiderman or Elmo, while not affiliated with Marvel Comics or Sesame Street or its affiliates, line the sidewalks offering their services as a photograph prop. There are two legal issues in this type of behavior: concerns about safety, as such individuals may “hustle” tourists or fans, and intellectual property issues.

The security issue is real. The New York Times reported yesterday that an individual dressed as Spiderman was arrested this weekend in Times Square after having punched a police officer who had informed a tourist that she was not required to tip “Spiderman.” Indeed such costumed individuals are even being blamed by some for the decline in Broadway tickets sales. New York City Councilman Dan Garodnick (D-Manhattan) is reportedly drafting a bill which would require a license to be able engage in such activities in New York City.

The Cubs complaint alleges that [d]efendants’unsavory actions recently have escalated to physical violence,” giving as example an instance when one of the defendants, dressed as Billy Cub, allegedly started a fight at a bar in April 2014. The complaint also states that Defendants “have made rude, profane and derogatory remarks and gesticulations” when dressed as the Cubs mascot outside of Wrigley Field. The Chicago Cubs had sent defendants a cease-and-desist letter last year and engaged in negotiations with them “to avoid litigation” but it seems that they decided to sue after the alleged April bar brawl episode, fearing that such behavior would be associated with the team.

The other legal issue in an unauthorized use of a mascot is the possible copyright and trademark infringement, and that is the crux of the Cubs’complaint. The complaint claims trademark infringement, trademark dilution by tarnishment, trademark dilution by blurring, and unfair competition.

The costume worn by defendant is described in the complaint as a bear “wearing a Cubs cap and baseball jersey, each bearing the famous marks and trade dress of the Cubs.” “Billy Cub” is not the official mascot of the Chicago Cubs, it is instead Clark the Cub, a tall brown teddy bear wearing the team’s uniform. He (it?) poses in front of Wrigley Field with fans, but does not ask for tips

The complaint claims that the CUBS mark is a ‘famous’ trademark under 15 U.S.C. § 1125(c), the Federal Trademark Dilution Act of 1995, revised by the Trademark Dilution Revision Act of 2006, and that defendants’unauthorized use of the mark tarnished the Cub’s reputation and goodwill. The Trademark Act indeed provides remedies for owners of a famous mark if a third party made an unauthorized use of the mark which causes dilution by blurring or by tarnishment. It is not necessary that there is an actual consumer confusion, meaning that, in this case, the owners of the famous CUBS mark would not be required to prove that consumers actually believed that under the “Billy Cub’ outfit there was a Chicago Clubs employee. Likelihood of dilution is sufficient. The complaint nevertheless lists several examples of consumer confusion, as posted on Twitter, expressing beliefs that it had been Clark the Cub who (which?) had started a fight at a bar.

The Cubs are seeking an order that Defendant’s merchandise bearing the CUBS marks be destroyed, that Defendantsremove reference to the CUBS marks on their websites, and they are also seeking damages.

Image is Chicago 2011, courtesy of Flickr user karlnorling under a CC BY 2.0 license.

Filed Under: Sports Law, Trademark ·

Post Mortem Right of Publicity, in Massachusetts and Arizona

July 25, 2014 · by marie-andree@maw-law.com ·

Here is my short article about the Massachusetts right of publicity bill published this week by the Transatlantic Technology Law Forum Newsletter.

The bill is S.2022, An Act protecting the commercial value of artists, entertainers and other notable personalities. The Act would give celebrities a post mortem right of publicity. Right of publicity is the right which protects an individual against unauthorized use of his or her identity for commercial purposes.

Some states, such as California, have statutory laws recognizing that this right survives the death of the individual. The Massachusetts law would, however, provide such post mortem right only to celebrities. Other states recognize a post mortem right of publicity at common law. For example, the Arizona Court of Appeals recognized last April a post mortem right of publicity for everyone, famous or not famous In the Matter of the Estate of Lois Catherine Reynolds (Ariz. Ct. App. April 24, 2014).

In this case, a brother and sister wanted to prohibit their sister Robin to use two photographs of their mother, Lois, who died in 2010, to illustrate two posts about Lois on her blog. They sued Robin, claiming that, by posting the photographs of their mother, Robin had violated the right of publicity of their mother. The trial court dismissed their case, but the Court of Appeal held that Arizona recognizes a post mortem right of publicity. The Court of Appeals explained further that this right is “descendible, and a claim for violation of the right survives the death of the holder. It is not limited to celebrities and it need not be exploited during life to be asserted in death.” The Court of Appeal concluded, however, that Robin had not violated her mother’s the right of publicity “because [the blog posts] are expressive works that do not employ [the mother]’s name or likeness for purposes of trade.”

New York does not recognize post mortem right of publicity. As I wrote on the EASL blog a few years ago, the S.D.N.Y. ruled in 2007 that Marilyn Monroe could not have passed any postmortem right of publicity through the residuary clause in her will, because she did not own any post mortem right of publicity at the time of her death in 1962, Shaw Family Archives Ltd v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y. 2007). This decision led to the introduction of a bill, A08836 to amend New York Civil Rights Law §§ 50, 51. It would have provided a postmortem right of publicity to personalities, but was never enacted.

Image is Street Party – 142 High Street – Street, Somerset courtesy of Flickr user Elliott Brown, under a CC BY 2.0 license.

Filed Under: Publications, Right of Publicity · Tagged: Post Mortem Right of Publicity, Right of Publicity

Writing Identification of Goods and Services in a Trademark Application

July 23, 2014 · by marie-andree@maw-law.com ·

I wrote last week on the IPKat blog about a recent Trademark Trial and Appeal Board (TTAB) case, Harry Winston v. Bruce Winston. It is a likelihood of confusion case between two marks, Harry Winston and Bruce Winston.

What I found interesting reading the case is that the TTAB cited the recent Stone Lion Capital Partners, LP v. Lion Capital LLP Federal Circuit case, where the court had found that it is “proper… for the [TTAB] to focus on the application and registrations rather than on real-world conditions, because… the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application.”

When I first read the Lion Capital case a few months ago, I thought that it might become a useful case for trademark attorneys in their every day practice. When an applicant wishes to register a trademark, he or she must register it in one or more of the different 45 classes for goods or services, and the application must contain an identification of the goods and services for each of the classes.
As an attorney, I write such descriptions when a client wishes to register a trademark, or when a client receives an office action letter from the USPTO asking him or her to clarify the wording of the identification of goods and services. This happens often when a client is located in a foreign country and filed an international trademark registration using the Madrid system of international registration. The USPTO has precise rules about how the description has to be written and therefore the identification of goods and services often have to be rewritten for the mark to be registered in the U.S.

Let’s go back to the Lion Capital case. When an investment management company, Stone Lion Capital Partners , filed an intent-to-use application to register the mark STONE LION CAPITAL, another investment management company, Lion Capital LLP opposed the registration under Section 2(d) of the Lanham Act (the Trademark Act) claiming that the proposed mark would likely cause confusion with the registered marks LION CAPITAL and LION.

When the TTAB and the Federal Circuit Court are asked to decide whether there is indeed a likelihood of confusion between two marks, they use the thirteen so-called “du Pont” factors, named after a famous 1973 case, to determine if indeed there is a likelihood of confusion. The third factor is the similarity or dissimilarity of the trade channels (are the goods and services sold in the same places?)

The TTAB had found that neither the application nor the registration contained any limitations on the channels of trades and classes of purchasers. In other words, as the descriptions contained no restrictions, the TTAB had to presume that they were offered in the same places, to the same prospective clients.
This is a case to keep in mind when writing a goods or services description if an applicant is seeking to register a mark which may be considered similar to a registered mark. Limiting the channels of trades in the description may allow, if necessary, the applicant to successfully argue later that the marks are not legally identical.

Image is Stone Lion Bridge courtesy of Flick user Brian under a CC BY-ND 2.0 license.

Filed Under: Trademark · Tagged: Trademark Application, Trademark Classes

New Article Published About Right of Publicity Case

July 16, 2014 · by marie-andree@maw-law.com ·

A short article I wrote for the Journal of Intellectual Property Law & Practice has just been published. The article is about an interesting case, Kristina Hill, Brian Edwards and Thomas Privitere v Public Advocate of the United States, Civil Action No. 12-cv-02550-WYD-KMT.

A federal district judge dismissed the right of publicity claim of a couple whose engagement photograph had been used without permission by an organization to promote anti-gay speech, but the copyright claim of the photographer who took the picture was allowed to proceed.

I had also blogged about this case for the IPKat blog, which led to the publication of this article. I had also blogged about it two years ago for the Digital Media Law Project blog.

One can regret that the right of publicity claim was dismissed. One can regret it first because knowing that a couple has now to live with the fact that their engagement picture has been used to promote a message of intolerance towards the very group to which they belong is disturbing. One can also regret it from a legal point of view. The right of publicity has a double nature as it protects the commercial value of one’s personality, and is thus both a privacy right and a property right. The Colorado Supreme Court noted in the Joe Dickerson & Associates, LLC v. Dittmar case cited by Judge Daniel that “[t]he market value of the plaintiff’s identity is unrelated to the question of whether she suffered mental anguish as a result of the alleged wrongful appropriation” thus signaling that the Colorado right of publicity protects privacy, regardless of the commercial value of one’s persona.

The First Amendment defense permitted the use of the photograph and thus free speech weighed heavier in the balance than the couple’s privacy. But fair use, which also protects free speech, was not strong enough a defense to have the copyright infringement claim dismissed. The photographer’s intellectual property rights weighed heavier on the balance than free speech, particularly because the use was not transformative enough. Therefore, the all-mighty First Amendment ended up protecting, well, not-so-much-speech, to the detriment of the privacy rights of the aggrieved couple.

However, even though the way defendants expressed their ideas was not creative, their speech participated nevertheless in the current general civil rights debate of what should be considered a family in the Twenty-First century. Lets’ hope that, along the road, learning about this case will make at least some people realize that gay marriage is, well, marriage, an institution which should be celebrated, not hated.

Image is Cold hearted courtesy of Flick user jillyspoon under a CC BY-ND 2.0 license.

Filed Under: Publications, Right of Publicity ·

Post on The IPKat Blog About Lindsay Lohan Right of Publicity Suit

July 7, 2014 · by marie-andree@maw-law.com ·

I wrote a post for The IPKat blog last week about a right of publicity suit filed in New York by Lindsay Lohan against the makers of the Grand Theft Auto V video games. The law is N.Y. Civil Rights Law Section 50 and 51. I wrote two other posts on my own blog, here and here, about New York right of publicity cases.

I find right of publicity a particularly interesting law, as it is a privacy right and also an intellectual property right. The law protects the commercial value of one’s identity, even if one is not famous. Indeed, our image may be used to promote a product, even if we are not famous. Think of the smiling faces looking back at you while you shop for cereals or cookies.

Image is flikr1262, courtesy of Flickr user flikr pursuant to a CC BY 2.0 license

Filed Under: Right of Publicity · Tagged: New York Civil Rights Law, New York Right of Privacy, Right of Publicity

I have joined the TTLF at Stanford Law School as a Fellow

July 1, 2014 · by marie-andree@maw-law.com ·

I am very happy to announce that I have joined the Transatlantic Technology Law Forum at Stanford Law School as a Fellow for 2014-2015.

I will write two research papers and participate to the TTLF’s newsletter. I love to write about technology and law, so I could not be happier! I will, of course, continue to practice law (and also knit, maybe).

Image is Technology, courtesy of Flickr user Brenda, under a CC BY 2.0 license.

Filed Under: Uncategorized ·

Les Hébergeurs et les Fournisseurs d’Accès à Internet Sont-Ils en Charge de la Police du Net?

June 26, 2014 · by marie-andree@maw-law.com ·

Le projet de loi pour l’égalité entre les femmes et les hommes est discuté aujourd’hui à l’Assemblée Nationale. Le Sénat a adopté le 17 avril dernier le projet de loi en seconde lecture.

L’article 17 du projet de loi introduirait un troisième alinéa du 7 du I de l’article 6 de la loi n° 2004-575 du 21 juin 2004 pour la confiance dans l’économie numérique (LCEN).

Actuellement, selon l’article 6 I de la LCEN, les hébergeurs et les fournisseurs d’accès à Internet (FAI) ont l’obligation de mettre à la disposition des internautes un dispositif en ligne facilement accessible permettant à …read more

Filed Under: Cyber High and Law ·