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The film and television context is rife with potential intellectual property issues, as virtually every facet of creating and producing a film or television program presents an opportunity for the unwitting author, filmmaker, or producer to incur liability for infringing upon another's intellectual property rights. Accordingly, those who create these works must take care to ensure that their productions do not cross the line into the territory of infringement. On the other hand, it is equally important that copyright or trademark holders understand the extent of their rights in order to protect the often-sizeable investments they have made in establishing those rights. Recent decisions by federal courts can provide some guidance in this respect.
This Article is the first of a two-part series examining the state of the case law regarding copyright and trademark protection in the film and television context. Part I considers recent rulings that address various aspects of copyright law, including the "substantial similarity" element of a prima facie claim of copyright infringement, the affirmative defense of "fair use," the preemption of state law claims under the federal Copyright Act, and the nature of copyright protection for fictional characters that are portrayed in film or other audiovisual works. Part II will discuss the unlicensed use of another's trademark in film, specifically with respect to the passive appearance of unaltered marks, the use of real marks to represent unrelated fictional products, and the application of various affirmative defenses to trademark infringement claims.
Copyright issues, in particular, frequently arise in films and television. This Part addresses: (a) how federal courts have handled the "substantial similarity" element of copyright infringement claims in lawsuits pertaining to television programs; (b) the application of the "fair use" defense; (c) federal preemption of state law claims under the Copyright Act; and (d) the extent to which film characters are protectable under copyright law.
Whether a plaintiff can prove that a defendant's work is "substantially similar" to copyright-protectable elements of the plaintiff's work is a vital component of a copyright infringement claim.1 A number of cases have addressed substantial similarity in the television context, but no court, to date, has issued a ruling that the copyrightable elements of television programs are substantially similar.
For instance, in 1988, the U.S. District Court for the Southern District of New York ("SDNY") denied a defendant's summary judgment motion, holding that whether the game show Bamboozled infringed upon the plaintiff's copyright in To Tell the Truth was an issue for the jury to decide.2 After noting a number of similarities between the two game shows, such as the use of a celebrity panel to question contestants to determine if they were lying, the court reasoned that "even though a television game show is made up entirely of stock devices, an original selection, organization, and presentation of such devises can nevertheless be protected, just as it is the original combination of words or notes that leads to a protectible [sic] book or song."3
In the 1992 case Sheehan v. MTV Networks,4 the SDNY held that the similarities between the game shows Lazer Blitz and Remote Control were all stock devices not protectable in the abstract, explaining that the differences in the precise items employed and the manner in which they were employed in each program made the two game shows very different.5 Although both shows incorporated the use of three players, multiple rounds of play, the elimination of contestants, a host posing questions to the contestants, and the use of some hand-held device, the court concluded that the essential aspects of the games have substantial differences, namely, "an operable laser gun requiring skilled use [Lazer Blitz] as opposed to a non-functional prop resembling a television remote control [Remote Control], a multi-panel wall unit as opposed to a large television, [and] questions limited to music videos as opposed to questions involving television trivia as well as music."6
In 1993, the U.S. District Court for the Central District of California ("C.D. Cal.") granted a defendant's motion for summary judgment, finding that the plaintiff could not establish substantial similarity between the parties' two talk show programs, Listen Up! Young Voices for Change and Listen Up! Tribalism 1990s.7 The court considered "whether the ordinary person would find the total concept and feel of the works" to be substantially similar and concluded that the plaintiff's identified similarities—that is, a song to open the program, an audience composed of young adults, adult guests, a moderator who questions both, a discussion of race relations, the phrase "Listen Up" in the title, commercial breaks, and a closing statement by the moderator—constituted "standard elements derived from the idea of a talk show where the topic of discussion is race relations."8
In Survivor Productions LLC v. Fox Broadcasting Co.,9 CBS claimed that Fox's reality show Boot Camp infringed upon its copyrighted material in Survivor and argued that Fox's show was substantially similar because its plot "places its contestants in harsh and unfamiliar conditions, requires them to work together in teams, and then forces them to vote off one contestant at the end of each episode in a ritualized ceremony," and its production contains "additional similarities in landscape photography, music, editing techniques, and overall 'look and feel' of the [Survivor] program."10 In granting dual motions to strike portions of the complaint and answer on the same day, the C.D. Cal. noted that the "total concept and feel" test is the appropriate method for determining substantial similarity in this context. The case was ultimately settled, and the C.D. Cal. issued no further opinions in the case.
The SDNY later dealt with another Survivor-related conflict in 2003 when CBS sued ABC over its reality show I'm a Celebrity, Get Me Out of Here, claiming that the similarities between the two shows were sufficient to warrant a preliminary injunction.11 In denying the preliminary injunction, the court focused on such elements as total concept and feel, tone, production value, setting, characters, plot, and individual scenes.12 For instance, the court found that Survivor's tone was serious while Celebrity's was comedic, and that Survivor's production value was very professional while Celebrity's was more like a home video.13 Although acknowledging that a compilation of stock ideas can be protectable, the SDNY ultimately ruled that the plaintiff "is not likely to prove that a lay observer would consider the works as substantially similar to one another."14
In Bethea v. Burnett,15 the C.D. Cal. concluded that no reasonable jury could find that the defendant's program The Apprentice was substantially similar to plaintiff's treatment for a show entitled C.E.O.16 In granting the defendant's motion for summary judgment, the court explained that "[a]t the most abstract level, or at the level of 'ideas,' there is some similarity between C.E.O. and The Apprentice" (e.g., the plot depicts "a group of dynamic contestants from varied backgrounds competing in business challenges in a dynamic corporate environment for promotions and benefits and, ultimately, a real job as a top-level executive of a corporation"), but that once the expressions of the plot ideas are compared, "it becomes evident that [p]laintiffs' alleged similarities are, in fact, not similar at all."17
In 2007, the C.D. Cal. held that no reasonable jury could conclude that Rachel Ray, a lifestyle program that includes cooking segments, is substantially similar to any protectable elements in Showbiz Chefs, an interview cooking program.18 In reaching this result, the court compared the plot, themes, dialogue, mood, settings, characters, and sequences of events of the two shows.19 Although recognizing that an infringement claim can be supported by a "string of unprotected elements," the court ruled that any similarities and patterns must be "voluminous and specific."20
In Rodriguez v. Heidi Klum Co. LLC,21 the SDNY ruled that the plaintiff, the holder of a copyright in a treatment for a television program entitled American Runway, could not prevail in its infringement suit against the creators of Project Runway.22 In granting the defendant's summary judgment motion, the court found the plaintiff's alleged similarities—that is, the use of a panel composed of fashion industry experts, a design workroom with sewing machines, professional models, and a New York setting—to be predominantly "scenes a faire."23 It further concluded that the "concept, feel and theme of Project Runway are plainly distinguishable from those of American Runway" and explained that while the defendant's show provides viewers a "glimpse into the world of high fashion [wherein the viewers are] allowed to watch the fashion elite decide which of the contestants deserves admission into their exclusive enclave," the plaintiff's show "is much more populist and inclusive"—giving the viewer a powerful voice in the show's outcome—and therefore "caters to engaging the fashion sensibilities of its 'real American' audience."24
Both the C.D. Cal. and the SDNY have heard cases involving the weight-loss reality show The Biggest Loser.25 In each case, the court granted summary judgment in favor of NBC and dismissed the claims of the individual alleging that NBC had infringed upon his copyright in a similar show format. In Milano, the court stated that the plaintiff's FAT to PHAT treatment was not sufficiently original to be protectable under copyright law, noting that a number of weight-loss programs had already fallen into the public domain before the plaintiff wrote the treatment.26 Although the FAT to PHAT treatment and the The Biggest Loser contained similarities, those similarities pertained to elements that were not protectable.27 Similarly, in Latimore, the SDNY found that there was no substantial similarity between The Biggest Loser and the protectable elements of the plaintiff's treatment for Phat Farm/Fat Farm – A Weight Loss Adventure.28 The only similarities between the two works were the generic idea of a weight loss show and the "scenes a faire" that flowed from that concept, none of which were protectable.29
A related, but somewhat distinct case arose in Harney v. Sony Pictures Television, Inc.30 In Harney, professional photographer Donald Harney filed copyright infringement claims against Sony Pictures Television and A&E Television Networks, alleging that certain images in its made-for-television movie violated his exclusive rights in copyrighted photographs.31 In 2008, a man using the name Clark Rockefeller abducted his daughter Reigh and fled Massachusetts, leading to a nationwide manhunt.32 As part of the search, authorities distributed a photograph of the father and daughter—taken by Harney—that first appeared in a Boston newspaper in 2007.33 Rockefeller and Reigh were eventually found, Rockefeller was prosecuted for kidnapping, and Sony produced a made-for-television movie about the lurid story.34 In March 2010, A&E aired the film, entitled Who Is Clark Rockefeller?, on its Lifetime Television Network.35
In his suit, Harney claimed that the movie displayed a photograph that was derivative of and substantially similar to his copyrighted photo.36 The court, in granting the defendants' motion for summary judgment, compared Harney's photograph with the images in the film and concluded that they shared "factual content but not Harney's expressive elements,"—that is, those elements entitled to copyright protection.37 The court therefore ruled that "[t]his limited sharing is not enough to establish substantial similarity and copyright infringement," and that "[t]he positioning of the Rockefellers in the middle of the frame, visible from mid-chest upward, is an element of minimal originality and an insufficient basis, without more, to find substantial similarity."38
Accordingly, this relatively limited sample of federal case law reveals that no court has yet ruled that a particular television program is substantially similar to the copyrightable elements of a plaintiff's copyrighted work.
Another way for a defendant to overcome a copyright infringement claim is to assert the "fair use" defense under § 107 of the Copyright Act.39 The fair use doctrine grants "a limited privilege [to] those other than the owner of a copyright to use the copyrighted material in a reasonable manner without the owner's consent."40 Courts look to four non-exclusive factors written into the Copyright Act when considering a fair use defense: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect on the potential market or value of the copyrighted work.41
In 2011, South Park Digital Studios, Comedy Partners, MTV Networks, Paramount Home Entertainment Inc., and Viacom International Inc. successfully defended themselves against federal claims of copyright infringement related to an April 2, 2008, episode of the popular Comedy Central television program South Park.42 Brownmark Films, LLC, co-holder of a copyright in a music video titled, "What What (In the Butt)" ("WWITB"), claimed that the defendant television studios' unauthorized replication of the music video entitled the company to damages and injunctive relief.43 In assessing South Park's replication of the WWITB video, the district court applied the fair use doctrine and readily concluded that the defendants' use was "fair": (1) the work was a classic parody, transforming the original piece to not only poke fun at the original, but to further comment on the phenomenon of "viral videos" and Internet celebrity; (2) the nature of the copyrighted work itself was not helpful in assessing fair use because parodies almost invariably copy publicly known, expressive works; (3) the derivative work was less than a third of the length of the original video, and its use of the original's imagery and repetitive lyrics was necessary to successfully conjure the original and comment on a bizarre social phenomenon; and (4) the work posed little risk of usurping the market for the original in that it sought to lampoon viral video crazes, while the original video epitomized such a craze.44
A similar case arose in California when Carol Burnett, an American actress and host of The Carol Burnett Show, sued Twentieth Century Fox Film Corporation for copyright infringement based on an episode of the animated TV series Family Guy that featured a parody of Burnett's wholesome "Charwoman" character from her 1970s sketch-comedy program.45 During the episode in question, an animated version of the Charwoman is seen mopping the floor of a pornography shop as music evoking The Carol Burnett Show's theme song plays in the background.46 This is immediately followed by a scene involving a joke about Burnett's habit of tugging her ear at the end of her show.47 In granting the defendant's motion to dismiss on fair-use grounds, the district court found that one could reasonably perceive Family Guy's use of the Charwoman as a parody due to its placement of a cartoon version of Burnett in a crude and absurd situation in order to lampoon her as a public figure.48 In weighing this finding with the remaining fair-use factors in a manner nearly indistinguishable from the South Park court, the court ruled that the fair use defense barred Burnett's claim.49
In another similar case in New York, the host of a public access television show failed to succeed in her copyright infringement suit against the producers of Comedy Central's faux-news program The Daily Show.50 Defendants' program used a six-second clip of The Sandy Kane Blew Comedy Show to introduce a segment called "Public Excess," which mocked various public access programs by presenting and commenting on clips of those shows.51 An even shorter, half-second-long clip of the plaintiff dancing in a bikini was also used in a commercial promoting The Daily Show.52 In its order granting the defendants' motion to dismiss, the court reasoned that the first factor of the fair-use inquiry—the purpose and character of the use—weighed strongly in the defendants' favor because, in presenting plaintiff's clip, they had sought to critically examine the quality of plaintiff's public access television show.53 The court further emphasized that despite the similar market for comedy potentially served by both the source material and the parody, it could not be credibly argued that the Daily Show's critique of the short clip would siphon away demand for the plaintiff's comedy routine.54
When Plaintiffs file complaints alleging violations of federal intellectual property rights, they frequently include related state law claims. The Copyright Act, however, provides a tool with which a defendant may be able to bar some of these claims arising under state law. Section 301(a) of the Act "expressly preempts state claims where the plaintiff's work 'come[s] within the subject matter of copyright' and the state law grants 'legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright.'"55 Some recent case law addresses the application of copyright preemption in the television and film context.
In 2008, the Third Circuit ruled that certain state right-of-publicity laws may not be preempted by the Copyright Act, and that an individual's voice may not be divorced from his or her persona.56 In that case, the estate of John Facenda, the man who had garnered much national attention and was known to many football fans as the "Voice of God" for lending his distinctive voice to numerous movies and videos produced by NFL Films, sued the company under various federal and state causes of action.57 Prior to his death in 1984, Mr. Facenda had signed a standard release that allowed NFL Films to continue to use his voice in perpetuity and in whatever manner NFL Films saw fit, so long as such use did not constitute an endorsement of any good or service.58 In 2005, NFL Films produced a 22-minute short film entitled "The Making of Madden NFL '06" about the soon to be released annual update of the video game.59 NFL Films incorporated recordings of Mr. Facenda's voice into this film for a total of 13 seconds.60 Mr. Facenda's estate subsequently filed suit in the US District Court for the Eastern District of Pennsylvania alleging that such use constituted false endorsement under the federal Lanham Act and a violation of the Pennsylvania right of publicity statute.61
The district court ruled that the film was an advertisement and, as such, the use of Mr. Facenda's voice, however briefly, constituted false endorsement under the Lanham Act and a violation of his right of publicity under Pennsylvania law.62 On appeal, NFL Films argued that it owned the copyright in the voice recording, that it had the right to exploit and make derivative works of the voice recording, and that the federal copyright laws preempted the state right of publicity claim.63 In addressing the Copyright Act's preemption provision, the court reasoned that there must be a showing of an exclusive right in the work—and that work must be within the subject matter of copyright—for preemption to apply.64 The court ruled that the plaintiff's publicity claim was not preempted because it relied on an element that was not equivalent to any exclusive rights granted to federal copyright holders.65 It further held that Facenda's voice was not subject to copyright protection because his persona, which is impossible to divorce from his voice, is not protectable under copyright law.66 The Third Circuit ultimately vacated the grant of summary judgment as to the Lanham Act claim, but affirmed the lower court ruling as to the right of publicity claim, holding that federal copyright laws did not preempt the Pennsylvania state right of publicity statute and that a voice cannot be separated from an individual's persona.67 In other words, copyright protection of a recording does not necessarily expunge or eliminate the underlying publicity right contained in one's voice.
More recently, a 2011 decision by the Ninth Circuit exacerbated a circuit split over the preemption of state law claims by the Federal Copyright Act.68 In Montz v. Pilgrim Films & Television, Inc.,69 the plaintiffs, Larry Montz and Daena Smoller, claimed that they had pitched an idea for a television show to NBC Universal and the Sci-Fi Channel regarding a team of paranormal investigators that look into claims of paranormal activity.70 The plaintiffs alleged that the pitch was made in keeping with standard industry practice, whereby they submitted the idea for the purpose of partnering with the defendants and with a justifiable expectation of a share of the profits and credit if the defendants exploited the idea.71 Three years after the pitch, when the Sci-Fi Channel (now known as the SyFy Channel) launched the Ghost Hunters television series, which follows a team of paranormal investigators who explore claims of paranormal activity, the plaintiffs sued the defendants alleging copyright infringement as well as state law-based breach of implied contract and breach of confidence claims.72
The defendants argued that the Federal Copyright Act preempted the state law claims, an argument that both the C.D. Cal. and a panel of the Ninth Circuit accepted.73 However, sitting en-banc, the Ninth Circuit reversed the district court and panel decisions and found that such claims were not preempted.74 The court noted that the Copyright Act preempts state law claims where the plaintiffs' work "come[s] within the subject matter of copyright" and the state law grants "legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright."75 The appeals court found that a pitch for a television series that is fixed in a tangible medium of expression (in this case screenplays, videos, and similar formats) was within the subject matter of copyright.76 The Ninth Circuit then determined that breach of implied contract and breach of confidence claims were not "equivalent" to any of the exclusive rights of copyright holders because they included an "added element," namely, an implied agreement that the defendants would pay for the use of the plaintiffs' idea in the breach of implied contract claim, and a duty of trust or confidential relationship in the breach of confidence claim.77 Thus, even though the copyright claims could not proceed because "a concept for a film or television show cannot be protected by a copyright," the breach of implied contract and breach of confidence claims could proceed.78
While literary characters have generally been denied copyright protection on the grounds that they embody little more than unprotectable ideas, courts have nevertheless ruled that those fictional characters that are visually depicted in a film or other audiovisual work are entitled to protection.79 Indeed, a recent line of federal case law illustrates a trend of courts strengthening filmmakers' rights in copyrightable character elements while limiting the reach of the public domain.
Most recently, in 2011, the Eighth Circuit ruled in favor of Warner Bros. Entertainment Inc. in its copyright infringement suit against several movie image licensors who had been selling altered public domain images of famous characters from The Wizard of Oz, Gone with the Wind, and a number of Tom & Jerry short films.80 In affirming the district court's grant of a permanent injunction, the appellate court found that, in certain instances, copyright law prohibited the defendants from extracting images from publicity materials for the classic films and licensing them for use on consumer items like t-shirts, playing cards, and three-dimensional figurines.81 Before the plaintiff's films were completed and copyrighted, producers circulated publicity materials to garner attention for the films.82 In doing so, however, they failed to include the required copyright notice, which ultimately led the Eighth Circuit to conclude that the publicity materials had fallen into the public domain, preventing the plaintiff from restricting their use.83 The court nevertheless explained that the defendants' freedom to make derivative works—that is, expressive creations that incorporate major, copyright-protectable elements of an original work—based on the public domain materials was limited to the extent that the derivatives conflicted with the studios' valid copyrights in the films.84 In other words, copyright liability could still arise where some aspect of the defendants' derivative work overlapped with the copyright-protected material.85
The Eighth Circuit analyzed the scope of the studios' copyrights in the classic films, the scope of the material dedicated to the public domain, and whether the defendants' derivative uses of the public domain images exceeded the latter, thus giving rise to infringement liability.86 First, the court concluded that Warner Bros. was entitled to copyright protection over the films' characters, reasoning that if material related to a certain character lies in the public domain, a party can nevertheless obtain rights in that character to the extent that a later copyrighted work makes the character sufficiently distinctive.87 Next, the court found that the public domain materials only covered each character's purely visual characteristics, revealing nothing about their signature traits or mannerisms as depicted in the films.88 Finally, it analyzed the defendants' liability as to three distinct categories of products: (1) those that reproduce a single two-dimensional image from a single public domain item, (2) those that create a new composite work by juxtaposing an extracted public domain image with another extracted image from the materials or a printed phrase from the book underlying the film, and (3) those that extend an extracted image into three dimensions.89 It ruled that the first category led to no infringement because the mere reproduction of an image onto another medium fails to add even an increment of expression to a film character, but that the second and third categories constitute new increments of expression that evoke the film characters in a way the isolated public domain images could not.90 The Eighth Circuit, therefore, largely affirmed the district court's grant of the permanent injunction, reversing and vacating only as it related to the first category of the defendants' products.91
A similar case arose in California when the widow and daughter of Jerome Siegel, one of the two creators of the iconic comic book hero "Superman," filed a declaratory action seeking a ruling from a federal district court that their copyright in two promotional announcements for the Superman comics gave them rights over the defendants' separate, later-in-time copyright in the entirety of the Superman character, which the creators had granted to the comic book publisher in 1938.92 The court refused, holding that the only copyrightable elements available to the creator's heirs arose from the fairly limited pictorial illustration in the promotional materials, namely, a black-and-white image of a person with extraordinary strength wearing a leotard and cape and holding a car over his head.93 The court reasoned that this was readily distinguishable from the defendants' copyright in the comic book, which encompassed such distinctive elements as Superman's name, alter ego, origins, compatriots, heroic abilities, and distinctive blue leotard, red cape and boots, and inverted triangular crest with a red "S" on a yellow background.94
In another analogous case, a federal district court held that MGM Studios' copyrights in the James Bond film series established a copyright in the character of James Bond.95 MGM had filed a copyright infringement suit against Honda Motor Co., alleging that an advertisement it aired reflected specific scenes from the films and featured a male protagonist that possessed James Bond's unique character traits as developed in the films.96 The court agreed, analogizing the James Bond character to "Rocky," "Sherlock Holmes," "Tarzan," and "Superman," and citing various Bond-specific character traits, namely, "his cold-bloodedness; his overt sexuality; his love of martinis 'shaken, not stirred'; his marksmanship; his 'license to kill' and use of guns; his physical strength; [and] his sophistication," as meriting copyright protection, rather than the character's visual appearance alone.97 Consequently, the court granted a preliminary injunction in favor of MGM, though it subsequently denied the studios' motion for summary judgment, citing a triable issue of fact as to whether the ideas expressed in the defendant's commercial were substantially similar to those protected by MGM's copyrights in the films.98
Anthony V. Lupo is a partner at Arent Fox LLP and a member of the firm's executive committee, co-chairs the firm's Entertainment/Intellectual Property Group, specializes in copyright, entertainment, trademark, and e-commerce law, and has significant experience in representing movie studios, computer companies, and television stations. Mr. Lupo can be reached at firstname.lastname@example.org.
Anthony D. Peluso is an associate at Arent Fox LLP. Mr. Peluso can be reached at email@example.com.
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