Imagine this:  the year is 1992, and after successfully escaping the streets (or so you thought), you discover that your mother has been killed and return home to find that, among other things, your gang is now playing second fiddle to its rival set and crooked cops have framed you for a crime you didn’t commit.  Sound familiar?  It might if you’re the protagonist from a John Singleton film, or, more likely, if you’re a fan of the popular video game Grand Theft Auto: San Andreas.  If the latter, you know that San Andreas follows gangsta “CJ” as he embarks on various “missions” in three fictitious West Coast cities, based on Los Angeles, San Francisco and Las Vegas, respectively.  You probably also know that players of the game can command CJ to engage in a series of NC-17 acts (all for a greater good, of course) including, but by no means limited to, car-jacking, drug dealing and, yes, even going to a strip club. 

It was this last feature of the game that was particularly troubling to E.S.S. Entertainment 2000, Inc. (”ESS”) - although for reasons quite different than that of parents of impressionable preteens.  In 2005, ESS, owner of an East Los Angeles gentleman’s club known as the Play Pen, sued Rockstar Games, Inc. (”Rockstar”), producers of the Grand Theft Auto video game series, including San Andreas, alleging that Rockstar’s depiction of the fictitious “Pig Pen” strip club in San Andreas constituted infringement of the Play Pen’s trademark under the Lanham Act, as well as unfair competition.  See E.S.S. Entertainment 2000 v. Rock Star Videos, 444 F.Supp.2d 1012 (C.D. Cal 2006).  Although Rockstar’s graphic artists were inspired by photographs of the Play Pen in designing the Pig Pen (as they were with other buildings in East LA), the Pig Pen itself is not a carbon-copy of the Play Pen, and indeed lacks several characteristic features of the Play Pen, including its “logo” — i.e., the words “the Play Pen” and the phrase “Totally Nude” displayed in a publicly available font, with a silhouette of a female stripper inside the first “P.”  Accordingly, Rockstar moved for summary judgment on all of ESS’s claims, asserting two defenses to liability: 1) nominal fair use, and 2) the First Amendment.  The district court granted summary judgment based on Rockstar’s First Amendment defense only, and ESS appealed. 

In an opinion issued on November 5, 2008, the Ninth Circuit affirmed the district court’s ruling.  See E.S.S. Entertainment 2000 v. Rock Star Videos, 2008 WL 4791705.  First, the Court held that the nominative fair use defense was inapplicable.  The nominative fair use doctrine applies where the defendant uses another’s trademark to identify, not the defendant’s goods or services, but the plaintiff’s goods or services.  In that context, the doctrine protects use of another’s mark for comparison, criticism or point of reference.  By contrast, San Andreas’ use of “Pig Pen” was not identical Play Pen’s “logo” at all.  Moreover, as testified to by the video game’s lead artist, the goal in designing the Pig Pen was not to comment on the Play Pen per se.

Second, the Court ruled that the First Amendment precluded Rockstar from liability under the Lanham Act.  The Court applied the two-prong test developed in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which states that use of another’s mark will be protected unless it has “no artistic relevance” to the underlying work whatsoever, or if there is artistic relevance, the title “explicitly misleads as to the source or the content of the work.”  Describing the first prong as a “low threshold,” the Court held that San Andreas’ inclusion of a Play Pen-like strip club was relevant to Rockstar’s artistic goal of creating a cartoon-style parody of East LA.  The Court also rejected ESS’s contention that San Andreas’ Pig Pen would create confusion that the Play Pen was somehow affiliated with the video game.  In brief, strip clubs and video games hardly go together hand in hand.  A “reasonable player” would not think that a company that owns one relatively unknown strip club in East LA would also produce or endorse a “technologically sophisticated” video game like San Andreas - especially where the object of the video game “does not revolve around running or patronizing a strip club”; there is no evidence that the Pig Pen setting is “anything but generic”; and the Pig Pen is “unambiguously not the main selling point of the Game.”  Thus, until perhaps we see Grand Theft Auto: Stripper’s Revenge, for those fine establishments looking to pursue infringement claims against gaming companies for incorporating similarly looking venues in their products, sorry, game over.

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We often meet with prospective clients who claim their stories or scripts have been stolen and used as the source for movies.  We tell these prospective clients that even in the best cases, it is difficult for plaintiffs to establish copyright infringement, and that the trend in recent years has been for courts to require plaintiffs to demonstrate an even higher degree of similarity between scripts to get their claims heard by a jury.  Courts now demand that plaintiffs in infringement actions involving movie scripts show close similarities between plots, characters, themes, mood, pace, dialogue and even sequence of events to get past summary judgment.  See e.g. Funky Films, Inc. v. Time Warner Entm’t, 462 F.3d 1072, 1077 (9^th Cir. 2006); Grosso v. Random House, Inc., 297 F.3d 815, 823-25 (9^th Cir. 2002).  This trend has continued this year.  A review of federal cases this year (available through Westlaw)  reveals a singular lack of success among plaintiffs who have alleged that their screenplays have been infringed.

Tillman v. New Line Cinema, 2008 WL 4488204 (7^th Cir. 2008).  Plaintiff alleged that the movie, John Q, which was released by now defunct New Line Cinema Corporation, infringed his script.  Both scripts involve anti-heroes who take drastic measures to get medical treatment for their sons.  In plaintiff’s script, the main character commits suicide to get life insurance proceeds for his family (perhaps the plaintiff did not know that every life insurance policy has a suicide exclusion).  In John Q., the eponymous main character takes everyone in a hospital waiting room hostage to force the hospital to perform his son’s surgery.  In the midst of the standoff, John Q. attempts to take his own life in order to give his son his heart, but the gun jams, and he is arrested.  Still, the hospital agrees to perform the surgery and his son is saved.  The Seventh Circuit affirmed the grant of summary judgment on the grounds that “no reasonable juror could find that [the] two works are substantially similar . . . .”  The court noted differences in characters, theme, and plot between the two works.  These dissimilarities could be expected, according to the court, because undisputed evidence demonstrated that the script for John Q. was written five years before plaintiff’s.  This may be a case where the court will award attorneys’ fees against the plaintiff for bringing an unreasonable claim.  See 17 U.S.C. § 505. 

Thomas v. Walt Disney Co., 2008 WL 425647 (N.D. Cal. 2008).  Plaintiff submitted her story, Squisher the Fish, to Disney, but it was returned two months later because Disney does not accept unsolicited submissions.  Plaintiff nonetheless alleged that during the time Disney had her script, it was copied and used as the basis for the movie Finding Nemo.  Although the district court noted a general similarity between the plots of the two works, with both centering on young fish who are caught by divers and put in fish tanks, the district court found the level of similarity too general to justify a finding of “substantial similarity.” The district court also found important differences between the sequence of events, characters, mood, and setting of the two works. 

Scott-Blanton v. Universal City Studios Productions LLLP, 539 F.Supp.2d 191 (D.D.C. 2008).  The Plaintiff, appearing pro se, alleged that her novel, “My Husband Is On The Down Low and I Know About It,” was the source for Brokeback Mountain.  The district court found that all aspects of Brokeback Mountain were created before defendants could have had access to plaintiff’s novel and that all potentially similar elements between the two works were not protectable.  As for the protectable elements, the court found that the two works were “remarkably different.” 

Pino v. Viacom, Inc., 2008 WL 704286 (D.N.J. 2008).  The plaintiff created a one-page treatment for a reality show called Under Pressure, which would pit amateur athletes versus professional in various sporting events.  Plaintiff claimed that his treatment was the basis for the Spike TV show Pros v. Joes, which also has amateur athletes competing against professionals. After analyzing the plot, theme, dialogue, mood, pace, settings, and sequence of the two shows, the court found no substantial similarity between the protectable elements in plaintiff’s treatment and dismissed plaintiff’s sole claim for copyright infringement.  

Bunick v. UPN, 2008 WL 1968305 (S.D.N.Y. 2008).  Plaintiff alleged that his script, entitled South Beach: Miami, was stolen by UPN and used in a series also called South Beach that aired approximately four times in 2006 before being cancelled.  The district court found no competent evidence that UPN had access to the script.  Because there was no proof of access, plaintiff was required to show “striking similarity” between the two works.  There was no showing of striking similarity because the only similarities were at the most generic level.  Finally, the court found there was “powerful evidence” of UPN’s independent creation of South Beach.

Bauer v. Yellen, 548 F.Supp.2d 88 (S.D.N.Y. 2008).  The district court found there was insufficient evidence that defendant had access to or “actually copied” the plaintiff’s script.  Accordingly, the plaintiff was required to demonstrate “probative similarities” between the two works, which plaintiff was unable to do.  The court awarded attorneys’ fees to the defendants after finding that plaintiff’s claims were objectively unreasonable.

Mestre v. Vivendi Universal U.S. Holding Co., 273 Fed.Appx. 631 (9^th Cir. 2008).  The Ninth Circuit found that there were only “generic similarities” between plaintiff’s script and the motion picture, Billy Elliot.  Citing Funky Films, supra, the court found that the plaintiff needed to demonstrate greater similarities in plots, characters, themes, mood, pace, dialogue and sequence of events to get past summary judgment.

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NBC Universal recently took the early lead in its hotly contested litigation with the Weinstein Company over the right to broadcast future seasons of Project Runway. The Weinstein Company owns the show, which has been broadcast on NBC’s Bravo network since its debut. NBC claims that the Weinstein Company’s recent deal to take the show to Lifetime–a competing network–violated NBC’s claimed right of first refusal.

On Friday, the Honorable Richard Lowe, the federal judge overseeing the case, issued a preliminary injunction against the Weinstein Company. The Court’s order prevents the Weinstein Company from “perform[ing] its agreement with Lifetime through the promotion, marketing, or exhibiting of Project Runway or any spin off of Project Runway on Lifetime.” In other words, Lifetime cannot broadcast Project Runway and cannot use the show in any of its advertising. The order also requires NBC to post a $20 million bond–$180 million less than the Weinstein Company was seeking. The money would be used to cover the Weinstein Company’s damages if NBC loses the case at trial or on summary judgment.

The decision was surprising given what NBC was required to prove: that it was likely to win on the merits of the case and that NBC could be “irreparably injured” if the injunction was not granted. This is not the type of case typically associated with irreparable injury; for an injury to be “irreparable,” it must be so unique that normal money damages are simply too difficult to calculate. The prototypical example of irreparable injury is the destruction of a historic building. Once a landmark is demolished–say, to make way for a new development–no amount of money can bring back the original building. The notion that NBC would suffer similar injury if a different network were to broadcast Project Runway is not readily apparent. As the New York Times stated: “The decision stunned parties on all sides of the deal because such injunctions are so rarely granted in entertainment industry disputes.”

Indeed, two cases cited by the Weinstein Company had previously held that damages from broadcasting television shows–namely, NHL games and the television version of “Fame”–were calculable. In the Fame case, the court held: “[T]he difference between advertising revenue generated on Fame and a replacement is measurable. Metromedia has both a track record on Fame (as well as adjacent time periods), along with audience surveys and ratings, as a basis for comparison and calculation of loss.” Metromedia Broadcasting Corp. v. MGM/UA Entertainment Co., Inc., 611 F.Supp. 415, 427 (C.D. Cal. 1985).

So what makes Project Runway so special?

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The five major studios (Sony, Universal, Fox, Disney, and Warner Bros.) have joined together to file a lawsuit against RealNetworks for distributing a computer program that allows end-users to bypass the Content Scramble System (”CSS”) technology that is used by the major studios to prevent copying of DVDs. The Studios allege that RealNetworks’ program violates a provision of the Digital Millennium Copyright Act (”DMCA”) which provides that “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under this title.” 17 U.S.C. § 1201(a). The DMCA defines “circumvent a technological measure” as meaning “to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.” 17 U.S.C. § 1201(a)(3)(A).

RealNetworks argues in response that its program merely allows users to exercise their fair use right to make a back-up copy of purchased CDs.  RealNetworks further argues that it obtained a license from the DVD Copy Control Association (”DVD CCA”) - the not-for-profit corporation, aligned with the Studios, that has the responsibility for licensing CSS - which allows RealNetworks to distribute its technology. According to RealNetworks’ Opposition to the Studios’ Motion for a Temporary Restraining Order:

Plaintiffs’ argument depends on the assertion that Real is “circumventing” CSS technology. Plaintiffs’ assertions are both conclusory and wrong. Real’s use of the CSS technology is licensed under the CSS License Agreement (”CSS Agreement”), and Real complies with the requirements of that license. There is therefore no legitimate argument that Real is circumventing the CSS technology when it uses that technology pursuant to a valid license.

However, RealNetworks’ Opposition does not cite any of the actual provisions of the CSS Agreement that would allow the distribution of its computer program.  This may indicate that the relevant provisions of the CSS License Agreement are ambiguous and do not clearly support RealNetworks’ position.   

On the other hand, the Studios apparently deliberately chose not to include the DVD CCA as a plaintiff in the lawsuit.  Since it is the party to the CSS License Agreement, DVD CCA would seem a necessary plaintiff if the Studios are going to claim that RealNetworks breached the CSS License Agreement.  The Studios may be shying away from arguing that RealNetworks breached the CSS License since the DVD CCA recently lost a well-publicized lawsuit against Kaleidescape, Inc., a CSS licensee.  DVD CCA argued in the lawsuit that Kaleidescape’s technology breached provisions of the CSS License that required the physical DVD disc to be present in the device while the movie was played.  The trial court rejected this argument and the case is currently on appeal.

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In October 2007, a jury in Duluth, Minnesota found Jammie Thomas liable for infringing the sound recording copyrights of record companies Vivendi, Warner Music Group and Sony BMG Music Entertainment.  In the first trial actually conducted of the many lawsuits filed by the Recording Industry Association of America (”RIAA”) against individuals who engaged in file sharing of sound recordings, the jury said Thomas, a mother of two, had to pay $9,250 for each of 24 songs she downloaded from the music site Kazaa, for a total of $222,000.  Thomas’s attorney requested a new trial, arguing, among other things, that the award was unconstitutional.  On September 24, 2008, US. District Judge Michael J. Davis granted the motion, throwing out the verdict, admitting that certain of his jury instructions were not correct and finding the damages assessed by the jury to be excessive: “Her status as a consumer who was not seeking to make a profit does not excuse her behavior,” Thomas wrote in his 44-page opinion.  “But it does make the award of hundreds of thousands of dollars in damages unprecedented and oppressive.”Judge Davis’ ruling was not unexpected.  During arguments on the motion, Judge Davis had suggested that he may have erred in instructing the jury jurors that simply making music available on file-sharing networks is the same as actually distributing it.  In his ruling, Judge Davis concluded that his instruction that the record companies didn’t have to prove that Thomas had actually transfered songs on a peer-to-peer network was a mistake that “substantially prejudiced” Thomas’ rights.

The judge also urged Congress to clarify the copyright statute regarding the issues of liability and damages in peer-to-peer network cases: “The parties point to no case in which large statutory damages were applied to a party who did not infringe in search of commercial gain.”

Although the RIAA has settled most of its file sharing lawsuits for nominal amounts, Thomas refused to pay and she had her day in court.  As the first trial of its kind, Judge Davis had no precedents to rely upon in fashioning his jury instructions.  Should the parties not reach a resolution, the next jury will judge Thomas’ behavior against new and improved instructions from Judge Davis.  Still reeling from the aftermath of Napster, Kazaa and similar Internet music services, the RIAA complains that improperly obtained sound recordings cost the industry billions of dollars a year in lost revenues.  As such, the ruling is a clear disappointment and major setback for the RIAA’s enforcement efforts and its ability to use the Thomas verdict to deter others.

Capitol Records Inc. v. Jammie Thomas, 06-1497, U.S. District Court, District of Minnesota (Duluth)

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In 1982, a 21-year-old cocktail waitress named Debra Sue Carter was raped and murdered in the small town of Ada, Oklahoma.  After five years of investigation, the police arrested Ron Williamson and his friend Dennis Fritz, and charged them with capital murder.  Both were convicted.

In 1995, Judge Seay of the United States District Court for the Eastern District of Oklahoma granted a writ of habeas corpus a mere four days before Williamson was scheduled to be executed.  Judge Seay ordered a new trial for Williamson and was affirmed by the Tenth Circuit on appeal in 1997. 

After spending 11 years in prison (Williamson spent that time on death row - Fritz was sentenced to life), Williamson and Fritz were finally exonerated by DNA evidence, and released in 1999.

In October 2006, The Innocent Man, by John Grisham, and Journey Towards Justice, by Dennis Fritz were published.  Both books document the murder of Debra Sue Carter, the trial of Williamson and Fritz, and their subsequent exoneration.  In the books, Grisham and Fritz are heavily critical of the government officials involved in the prosecution of Williamson and Fritz.

Remarkably, the government officials who prosecuted Fritz added insult to injury by suing him for defamation in 2007.  The officials also named Grisham as a defendant, as well as a third author, Robert Mayer, who wrote about another problematic murder investigation and prosecution in Ada, Oklahoma.  The governmental officials alleged that “the defendants ‘coordinated their efforts to launch a massive joint defamatory attack . . . through the use of speeches, interviews, and simultaneously publishing three books that were all three strategically released in October 2006.’”  The plaintiffs pointed to seventy-one statements in the books that plaintiffs claimed were defamatory. 

The defendants moved to dismiss the action under Rule 12(b)(6), arguing that the defendants failed to state a claim as a matter of law.  Judge Ronald White agreed, summing up his holding as follows: “[T]he court is faced with this basic question: What two words best describe a claim for money damages by government officials against authors and publishers of books describing purported prosecutorial misconduct?  Answer: Not plausible.” 

Judge White found that the “none of the statements are actionable as a matter of law” because they were either not defamatory or constituted protected opinion.  Interestingly, Judge White further found that the books were “substantially true” even though the motion was brought under Rule 12(b)(6) (meaning he had to assume the truth of the allegations of the Complaint).  The Court also dismissed the plaintiffs’ remaining claims for intentional infliction of emotional distress, false light, and civil conspiracy, finding again that the conduct complained of was not outrageous and constitutionally protected.

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Every day seems to bring a new report of an altercation between a celebrity and paparazzi.  For example, just in the last few days, Kanye West was arrested for allegedly vandalizing a paparazzo’s camera and Lindsay Lohan was photographed striking a paparazzo in the face that she believed had tripped her. 

Celebrities understandably feel as though they are under siege, but attempts by state and local governments to control the paparazzi have been futile.  For example, in 2006, the California legislature passed an “anti-assault” statute that is specifically targeted at the paparazzi. See California Civil Code section 1708.8.  Civil Code section 1708.8 imposes civil liability for “assault committed with the intent to capture any type of visual image, sound recording, or other physical impression . . . .”

I am unaware of any successful effort to use this law to combat paparazzi.  There are a few reasons for this.  First, it is extremely rare that a paparazzo attempts to commit an assault, which is usually defined as an intentional act that made the victim reasonably believe that he or she was about to be touched in a harmful or offensive manner.  In the vast majority of instances, paparazzi can credibly claim that their intent is take a photo, not make the celebrity believe they are about to be touched in a harmful or offensive manner.

Second, a civil lawsuit targeting a specific paparazzo (who is likely an independent contractor and individually judgment proof) will do nothing to dissuade the throngs of paparazzi that confront celebrities on a daily basis.  Thus, the costs of the lawsuit against an individual paparazzo would likely never justify the results obtained.

Given the strong protections offered to the press by our First Amendment, it is unlikely that laws seeking to more aggressively regulate the paparazzi would be enforceable.  For example, in the wake of Britney Spears’ recent clashes with the paparazzi, the Los Angeles City Councilman Dennis Zine proposed an ordinance creating a “personal safety zone” for celebrities.  However, the LAPD (who likely did not want the task of herding the paparazzi) issued a report that concluded the proposed ordinance was likely unconstitutional.  Among other problems, the LAPD noted that the ordinance was highly vague and there were questions as to who would classify as a “celebrity” or “paparazzi,” and whether the law would show favoritism towards celebrities.

Thus, the unfortunate answer for celebrities is that the legal system simply cannot offer them much protection against the paparazzi.

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Apple is known as a company that especially prides itself on its own novel and inventive products (and, for whatever it is worth, I am a big fan of their products). For example, Steve Jobs and Co. have had a lot of fun through the years mocking Microsoft for supposedly ripping off features of their Mac OS X operating system. Indeed, at one point (before Jobs’ return to the company in 1997), they even sued Microsoft for allegedly infringing Apple’s copyrights in a desktop operating system (through various versions of Microsoft’s Windows operating systems).

So, I was pretty surprised the other day when I read about Kane Kramer, an obscure British inventor who has nothing to do with Apple. Yet, according to several sites, he is “the guy Apple’s lawyers say invented the iPod.” And get this: he hasn’t gotten a penny from Apple for his invention of the iPod.  Even more surprising, he is not upset at all about it. Despite the fact that he is apparently struggling financially, he “was just so pleased that finally something that I had done which has been a huge success and changed the music industry was being acknowledged.”

Wow! What a story. Apple and its lawyers admit that the iPod – possibly Apple’s most popular product ever – was invented by someone else. And Apple is not paying the struggling inventor for it. And the inventor is happy about the whole thing! He just wanted to be acknowledged!

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The United States District Court for the Southern District of New York has enjoined further publication of “The Harry Potter Lexicon,” ruling that the encyclopedic website maintained by Steve Vander Ark, which includes, among other things, descriptions of Harry Potter characters, places, and magic spells, violates the copyrights of author J.K.Rowlings in her seven immensely popular Harry Potter novels.  The decision makes clear that the author of a reference guide cannot escape liability for copyright infringement merely by compiling an underlying author’s work, unless the reference guide “transforms” the original with new expression or meaning. Vander Ark attempted a “fair use” defense, arguing that a limited amount of Rowlings’ work could be incorporated in his Lexicon without requiring permission from the copyright owner.  Judge Robert P. Patterson rejected the defense, finding that too much of what Vander Ark used was taken verbatim from Rowlings’ books, and that Vander Ark had failed to add his own original commentary or other analysis.

Fair Use is a hot topic these days, for example, see Jeremiah’s blog entry regarding fair use, YouTube  and the DMCA.  The Rowlings case, however, relied on well-established copyright principles in concluding that Vander Ark’s work was a mere usurpation of Rowlings’ classics, and that Rowlings alone should have the right to create a guide derived from her own work.

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The final remaining lawsuit against the makers of the film Borat by persons who appeared in the film was dismissed last week by Judge Loretta Preska of the United States District Court, Southern District of New York.

In ruling upon the Defendants’ 12(b)(6) motion to dismiss, Judge Preska held that the plaintiffs had waived any of their potential claims by signing an explicit waiver clause “that on its face prevents Plaintiffs from bringing the above-captioned actions.” 

Since the release of Borat in November 2006, at least five different lawsuits have been filed against the makers of the film.  It appears that none of these lawsuits has survived past the initial pleading stage.  However, all of the prior lawsuits were dismissed upon First Amendment grounds – i.e., that the film was newsworthy – see here  and here. 

Judge Preska’s ruling appears to be the first to rely upon the Borat waiver agreement and is sure to cause a sigh of relief among studios and producers who rely on waiver clauses to avoid lawsuits by persons who appear in films, documentaries, and television shows, etc.   

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