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By Kyle R. Kroll
Kyle R. Kroll is a third-year student at the University of Minnesota Law School. His areas of interest include commercial and intellectual property litigation. He has written previously on these topics for the Minnesota Law Review.
For the second year in a row, we invited law students from schools around the country to submit original articles, the best of which would be published in selected Bloomberg BNA Law Reports. Entries were evaluated by our editorial team based on accuracy, depth of analysis, writing style and usefulness to our audience. The winning articles will appear during the month of April in 10 Bloomberg BNA publications and on Bloomberg Law.
After YouTube celebrities Benny and Rafi Fine, known together as the Fine Brothers and the creators of a series of popular online reaction videos, attempted to trademark their reaction video format, Internet users responded swiftly and severely. The brothers' YouTube channel subscriber count plummeted by over 500,000 and pressure built, forcing them to rescind their trademarks and release pending claims against other video creators.
The brothers' online faux pas has spurred intense debate about the role of intellectual property law in protecting such online media as YouTube videos. YouTube—the largest online video website with over one billion users—is a multi-billion dollar revenue source not only for Google, its owner, but also for independent content creators such as the Fine Brothers.
While outcry over the Fine Brothers' incident has simmered down, the broader issues underscored by the case are sure to resurface as YouTube continues to grow. Even so, criticism over similar occurrences may not be as dramatic in the future, and recent copyright and trademark cases provide an avenue, albeit a narrow one, for content creators to protect their online video formats.
The Fine Brothers are not the first to attempt to trademark a popular online video format. In January 2016, Sony tried to trademark the phrase “Let's Play,” a common moniker for an extremely popular genre of online videos featuring video game replays and commentary.
The Patent and Trademark Office rejected Sony's trademark application for being descriptive and too similar to an existing trademark. Online gamers applauded the ruling because they feared the mark would grant Sony control over the entire “Let's Play” genre.
Just weeks after Sony's failure, the Fine Brothers announced they had successfully registered trademarks for “React,” “Kids React,” “Teens React,” “Adults React” and more. The “React” trademark included in its description “[e]ntertainment services, namely, providing an on-going series of programs and webisodes via the Internet in the field of observing and interviewing various groups of people.”
To many in the online community, these marks were very similar to “Let's Play” because they described a broad category of videos. In reaction videos, participants on screen react to other online videos and miscellaneous topics. After the Fine Brothers' announcement, outrage soon followed in the form of a massive effort, coordinated on social and entertainment networking sites such as Reddit, Facebook and even YouTube itself, to unsubscribe from the brothers' YouTube channel.
In response to the online community's condemnation, the Fine Brothers attempted to explain that they would use their trademarks for good, not evil. They shared plans to create an online channel called “React World,” which would showcase reaction videos made by those who licensed their trademarks.
Licenses would be open to anyone, but creators would be required to share 20 percent of online advertising revenue along with 30 percent of any brand sponsorship deals. In exchange, licensees would be provided reaction video elements, graphics, production assistance and promotional opportunities.
But to many in the online community, these benefits were greatly outweighed by the costs. In particular, content creators believed the Fine Brothers were attempting to monopolize reaction videos generally. And they feared more creators and companies might try to do the same with other popular video genres.
Though the Fine Brothers disclaimed such a broad intention, there was some truth to the belief; the Fine Brothers themselves stated that they aimed to protect the mark “React” in addition to specific, structural elements of their reaction video format. YouTube's vice president of content partnerships, Kelly Merryman, may have added fuel to the fire, stating, “This is brand building in the YouTube age—rising media companies building their brands through collaborations with creators around the world.”
Evidence soon surfaced that several third party reaction videos had received takedown notices or were blocked by YouTube. In the past, the Fine Brothers had accused “The Ellen DeGeneres Show” of copying their formula, stating in a tweet that the show “just fully [took] it as their own. This happens too often.” For many, this evidence was proof enough to validate their suspicion that the Fine Brothers planned to exert control over the reaction video genre and monopolize it for financial gain, to the exclusion of other video creators.
Exactly one week after the "React World" announcement and their loss of over half a million YouTube subscribers, the Fine Brothers apologized, rescinded their trademarks and applications, discontinued "React World" and released all claims against other reaction video creators.
Trademark law generally seeks to protect distinctive marks that identify a product or service within a particular market. The goal is to avoid consumer confusion as to the source of a product or service and prevent consumer injury. In addition to marks, the Lanham Act also protects distinctive trade dress, which usually involves product packaging, but not product design. See 15 U.S.C. §§1125, 1127 (2012); Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).
The name “React” may not be protectable as a trademark because it is either functional or descriptive. But the answer to this question is less important than whether the structural elements of the Fine Brothers' react format are enforceable. After all, the online community's main concern was the ability of the Brothers—or anyone, for that matter—to control a general video format using trademarks.
In RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556 (C.D. Cal. 2005), 2005 BL 409, a federal district court held that the overall look and appearance of a TV series, including its selection, compilation, arrangement, sequence and combination of expressive elements, were not protectable trademarks. The court reasoned that although distinctive elements of a TV series could be protectable marks individually, the scope of trademark protection does not extend to the combined elements of the series. Instead, copyright law protects the entirety of a work.
Many elements of the Fine Brothers' plan undoubtedly included copyrights, even if the copyright elements were not at the forefront of discussion. So if the court in RDF Media is correct, then the Fine Brothers would have to turn to copyright law to protect their reaction video format. There is some evidence they were doing this, through claims made via YouTube's Content ID system.
When courts analyze copyright infringement, they look for substantial similarity between two works. But before comparing works, most courts filter out unprotectable elements such as ideas, facts, elements in the public domain, expressions that are merged with the ideas being expressed and scènes à faire, or scenes that flow naturally from basic plot premises. See Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003).
General plot ideas, for example, are not protected, and neither are common and general themes, stock devices or formats. Because the Fine Brothers' reaction videos entail “observing and interviewing various groups of people,” this setup likely would not be protectable due to its general nature and the fact that there are few alternative ways to film a reaction video.
However, a particular sequence of a significant number of unprotectable elements can be protectable as a whole. See Metcalf v. Bochco, 294 F.3d 1069 (9th Cir. 2002). In such circumstances, the similarity between the two works must be striking. Thus, even if the elements of the Fine Brothers' react videos are unprotectable by themselves, their unique combination may be protectable. A beat-for-beat copy of their format could give rise to claims of copyright infringement—exactly what Benny Fine asserted other reaction video creators were doing around the time of the rollout of React World.
Courts rarely find infringement of a sequence of unprotectable elements, especially not for TV series with hosts conducting interviews about miscellaneous topics. For example, in Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124 (C.D. Cal. 2007), 2007 BL 192400, the court held that general elements of a cooking talk show were not infringed by a similar competing show.
In the most recent case regarding TV show copyrights, , 2015 BL 441840 (C.D. Cal. Dec. 30, 2015), the court held that there was no infringement when the protectable elements of a TV series appeared in a different order in the defendant's TV series.
It is possible that the Fine Brothers' reaction format, combining all of its structural elements, could be protectable. However, other reaction video creators could likely use a different sequence of elements to avoid infringement.
Underlying the "React World" debacle is also the role of YouTube in policing its own website for infringement. Although not obligated to self-regulate its video content under the DMCA, YouTube does so through its Content ID system.
Content ID scans the hundreds of hours of content that is uploaded to YouTube every minute and compares the uploads to content it knows to be copyrighted. When a match is found, YouTube automatically starts diverting advertising revenue from the infringing video to copyright holders. Over $1 billion in revenue has been paid to the largest 5,000 copyright holders, including all of the largest U.S. television networks and movie studios.
Content creators can dispute Content ID matches, but the appeals process is weighted in favor of the rightsholders, even though there have been some false positives. Copyright holders have also been criticized for pushing the boundaries on the scope of their copyrights in Content ID. For example, the Fine Brothers used Content ID to pull down other reaction videos prior to abandoning "React World." Similar abuses continue to be the subject of much debate and controversy among YouTube creators and their fans.
Whether copyrights and trademarks like those implicated by "React World" are protectable is still somewhat unclear, but the case law suggests they are not. However, the intellectual property battles of the future may not be decided in the courtroom. As online media continues to grow in size and revenue-earning potential, the risk that content providers' self-regulation programs will be abused by copyright holders will likely increase. For now, content creators can be thankful that the masses have rebuffed early attempts to claim popular marks and general video formats.
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