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Magic Tricks Not Copyrightable But Silent Magician Wins Suit Because Pantomimes Are

Wednesday, March 26, 2014

By Tamlin H. Bason  

March 25 --A magic trick that was described in detail in a 1983 copyright registration for a dramatic pantomime is protected from imitation, even though a magic trick is not itself copyrightable, the U.S. District Court for the District of Nevada ruled March 20.

The court granted summary to the famed magician Teller on his copyright infringement claim against another magician who had uploaded two videos to YouTube that, in the defendant's own description, recreated Teller's “Shadows” illusion (details on the case can be found at (125 PTD, 6/29/12).

Although magic tricks themselves are not copyrightable, dramatic pantomimes are, the court noted. In this case, Teller registered as a copyright a dramatic pantomime that described “with meticulous detail” his illusion. “The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion as its central feature does not render it devoid of copyright protection,” the court determined, finding the registration valid.

The court then determined that Teller's illusion and the trick that the defendant performed in his YouTube videos were substantially similar. Indeed, the works “are nearly identical twins,” the court said, noting the overwhelming similarities between the works. The court accordingly granted Teller summary judgment on his infringement claim and it also said that he was entitled to attorneys' fees. However, genuine dispute remained as to whether the infringement was willful and so the court declined to award summary judgment on damages.

Shadowy Flower Illusion

Teller allegedly created his “Shadows” illusion in 1976. The court said that the illusion:

consists of a spotlight trained on a vase containing a single rose. The light falls in such a manner that the shadow of the rose is projected onto a white screen positioned some distance behind it. Teller then enters the otherwise still scene, picks up a large knife, and proceeds to use the knife to dramatically sever the leaves and petals of the rose's shadow on the screen slowly, one-by-one, whereupon the corresponding leaves of the real rose sitting in the vase fall to the ground, breaking from the stem at the point where Teller cut the shadow.  

The scene closes with Teller pricking his thumb with the knife, and holding his hand in front of the canvas. A silhouette of a trail of blood appears, trickling down the canvas just below the shadow of Teller's hand. Teller then wipes his hand across the “blood” shadow, leaving a crimson streak upon the canvas.  

 

The 1976 Copyright Act extended copyright protection to “pantomimes,” which had previously not been subject to protection. It was in this category that Teller registered his illusion in 1983. Teller has since performed the trick thousands of times. The vocal half of the famed duo, Penn Jillette, has touted the illusion, publicly stating, “No one knows how 'Shadows' is done and no one will ever figure it out.”

In 2012, magician Gerard Dogge uploaded two videos to YouTube in which he performed an illusion entitled “The Rose and Her Shadow.” A caption that accompanied each video stated: “I've seen the great Penn & Teller performing a similar trick and now I'm very happy to share my version in a different and more impossible way with you.”

Teller filed a lawsuit that included claims for copyright infringement and unfair competition.

Registration Valid, Works Similar

Dogge raised four arguments for why he thought Teller's copyright registration was not valid, his first attack directed at the fact that magics tricks are not copyrightable. But, the court found this argument unpersuasive.

“Because dramatic works and pantomimes clearly fall within the protection of the Copyright Act, Dogge has presented no reason for the court to doubt the validity of Teller's copyright,” Judge James C. Mahan said.

Dogge's remaining three arguments for why the registration was not valid were similarly flawed. For instance, he argued both that Teller abandoned his copyright and that Penn Jillette's statement that nobody could figure out the trick amounted to a challenge that deprived the illusion of copyright protection. But there is no evidence that copyright protection was expressly disavowed and the latter argument has no basis in copyright law, the court determined.

“Even if it were possible to waive copyright protection by 'challenging others,' the statement in question makes no indication that any other individual should publicly perform the work, and only demonstrates confidence that the illusion is so clever that its secret cannot be discovered,” the court said.

Finally, Dogge said that because Teller's illusion did not contain a “notice” it was not protectable. “However, the Copyright Act does not require that holders provide notice that their works are copyrighted,” the court said.

Finding Teller's illusion entitled to copyright protection, the court next considered whether the two works were substantially similar, which in the Ninth Circuit requires the application of an extrinsic and intrinsic test.

The extrinsic test assesses whether the non-protectable elements of the works are substantially similar. Here, “The events and dramatic progression of these two works are nearly identical,” the court said, finding the works to be substantially similar under the extrinsic test.

The intrinsic test seeks to determine if an ordinary observer would find that the works have a similar concept and feel. Dogge argued that this test weighed against a finding of substantial similarity because the magicians each use different methods to perform the illusion. But the court said that this argument misses the point. The court said:

By arguing that the secret to his illusion is different than Teller's, Dogge implicitly argues about aspects of the performance that are not perceivable by the audience. In discerning substantial similarity, the court compares only the observable elements of the works in question. Therefore, whether Dogge uses Teller's method, a technique known only by various holy men of the Himalayas, or even real magic is irrelevant, as the performances appear identical to an ordinary observer.  

 

The court accordingly granted Teller summary judgment on the copyright infringement claim.

Willfulness Not Clear

The court, however, declined to award Teller statutory damages because it determined that genuine disputes remained with regard to whether the infringement was willful. Specifically, the court said that it was not yet clear if Dogge actually knew that the illusion was copyrighted when he posted the videos online.

The court, however, said that an award of attorneys' fees under Section 505 was appropriate, 17 U.S.C. § 505.

Teller's Lanham Act claim alleged that Dogge's use of Teller's name to promote his video resulted in unfair competition under Section 43(a), 15 U.S.C. §1125(a).

The court noted that to succeed on his Section 43(a) claim, Teller needs to demonstrate that Dogge's use of Teller's name caused consumers to be confused as to whether Teller was involved with Dogge's activity. The court declined to grant summary judgment on the claim since Teller had not demonstrated consumer confusion.

Teller was represented by Mark G. Tratos of Greenberg Traurig LLP, Las Vegas. Dogge appeared pro se.

 

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://www.bloomberglaw.com/public/document/Teller_v_Dogge_Docket_No_212cv00591_D_Nev_Apr_11_2012_Court_Docke/1.

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