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Entries in fair use doctrine (4)

Friday
Sep252015

Pow! Boff! Thwack! Batmobile Wins Copyright Litigation

Business LitigationIP Litigation Attorney

 

 

by Nicholas Kanter
818-907-3289

 

DC Comics Litigation

 

It's not every day a Ninth Circuit court opinion includes, "Holy copyright law, Batman!," or “To the Batmobile!”  But in affirming a district court’s ruling in a copyright infringement case by DC Comics against the maker of Batmobile replicas, Judge Sandra Segal Ikuta chose these choice quotes, among others, to add a little more drama to the case.

DC Comics’ lawsuit centered on the Batmobiles driven by actor Adam West in the 1966 television series Batman, and actor Michael Keaton in the 1989 motion picture BATMAN.  Mark Towle, owner of Gotham Garage, made and sold replicas of these super autos for and to car collectors – to the tune of $90,000 each.

DC Comics, a company of Warner Bros. Entertainment and Time Warner, brought suit against Towle in 2011 in the United States District Court for the Central District of California alleging copyright and trademark infringement, as well as unfair competition. The parties filed cross motions for partial summary judgment as to DC Comics’ trademark, copyright and unfair competition claims, and as to Towle’s laches defense (wherein he claimed DC waited too long to sue for trademark infringement).

The District court granted DC’s motion in part, finding the Batmobile was a character entitled to copyright protection because the vehicle:                                     

1. Is known by one consistent name that identifies it as Batman's personal vehicle;

2. Has several traits that remained consistent over time, including "high-tech gadgets and weaponry", color and bat motifs; and

3. Has personality traits, consistently depicted as "swift, cunning, strong and elusive", and is even portrayed as a “superhero, Batman’s sidekick, if not an extension of Batman’s own persona.”    

9th Circuit Opinion: "To the Batmobile!"

In affirming the District Court’s opinion, the 9th Circuit relied on prior copyright infringement cases involving characters in comic books, television shows and movies:

Not every comic book, television, or motion picture character is entitled to copyright protection. We have held that copyright protection is available only “for characters that are especially distinctive.” Halicki [Films, LLC v. Sanderson Sales & Marketing], 547 F.3d at 1224. To meet this standard, a character must be “sufficiently delineated” and display “consistent, widely identifiable traits.” Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir. 2003) (citing Toho Co., Ltd. v. William Morrow & Co., Inc., 33 F. Supp. 2d 1206, 1215 (C.D. Cal.1998) (Godzilla)).

The 9th Circuit, like the district court, also applied a three part test, determining that a character entitled to copyright protection must:

1. Have "physical as well as conceptual qualities";

2. Be "sufficiently delineated", or immediately recognizable; and

3. Be "especially distinctive and contain unique elements of expression", i.e. not just any black sports car with weapons.

The court found that the Batmobile is a copyrightable character, that DC Comics is the owner of the copyright and that Towle infringed on DC Comics' exclusive right to produce derivative works of the character. 

Nicholas Kanter is a Business Litigation Attorney at our firm. Contact him via email: nkanter@lewitthackman.com, or by phone: 818-907-3289.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Friday
Sep182015

Online Piracy: 9th Circuit Cautions Copyright Holders re DMCA Takedown Notices

 

Franchise Agreement LawyerIntellectual Property Attorney

 

 

by Tal Grinblat
(818) 907-3284

 

A mother who uploaded a 29 second video to YouTube probably never dreamed she'd wind up with over a million views and a lawsuit by a major music publisher that went to the Ninth Circuit court of appeal.

Stephanie Lenz first videotaped her toddlers cavorting in her kitchen back in 2007 – Prince's Let's Go Crazy was playing in the background. She posted the video online along with the title "Let's Go Crazy" #1 to share with her family and friends. About four seconds into the video, Lenz asks her thirteen month-old son “what do you think of the music?” after which he jumped up and down while holding a toy.

An employee of Universal's music division (acting as Prince’s publishing administrator responsible for enforcing his copyrights) found the song on YouTube, considered the video's title and Lenz's question to her son and other details, to conclude the song was the focus of the video. Universal then sent YouTube a takedown notice pursuant to Title II of the Digital Millennium Copyright Act (DMCA) demanding the removal of Lenz's video.

To avoid infringement claims, YouTube complied with the DMCA notice and subsequently notified Lenz of the removal – citing Universal's claims of copyright infringement. Section 512(c) permits service providers, like YouTube to avoid copyright infringement liability for storing users’ content if the service provider “expeditiously” removes or disables access to the content after receiving notification from a copyright holder that the content is infringing. 17 U.S.C. § 512(c).

Lenz responded with a counter-notification to Universal, asserting fair use of the Prince song, and a demand that YouTube reinstate the video.

Abuse of the DMCA

If an entity abuses the DMCA notice procedure, it may be subject to liability under §512(f). That section provides:

Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages.

The 9th Circuit, in considering Lenz's claims that Universal misrepresented Lenz’s copyright infringement in their takedown notice to YouTube, questioned whether or not Universal abused the takedown procedures by not first evaluating whether or not the alleged infringement constituted fair use.

The Copyright Act of 1976 defines fair use as use of another’s work for purposes of criticism, comment,  news reporting, teaching, scholarship, or research (17 U.S.C. § 107). The Act includes a four part test to determine what constitutes fair use:

(1) Purpose or character of use, including commercial or nonprofit purposes;

(2) Nature of the copyrighted work;

(3) Amount of the work used;

(4) Effect of the use of the work on its market value.

The three judge panel decided there was not enough evidence to conclude that Universal knowingly made misrepresentations of copyright infringement in the DMCA takedown because the copyright holder need only form a subjective good faith belief that a use is not authorized to bring a DMCA take down notice.  However, the Court made it clear that copyright holders must consider the doctrine of fair use before issuing takedown notices:

Copyright holders cannot shirk their duty to consider—in good faith and prior to sending a takedown notification—whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by the law. That this step imposes responsibility on copyright holders is not a reason for us to reject it. 

Should a jury conclude that Universal ignored or neglected to assess fair use before sending the takedown notification, it will be liable for damages.  Similarly if in evaluating the evidence a jury finds Universal’s actions were NOT sufficient to form a subjective good faith belief about the video’s fair use or lack thereof, Lenz could again recover damages from Universal, even if Lenz’s damages are nominal.

An attorney at the Electronic Frontier Foundation whose goals include protecting free speech online and represented Lenz, issued this statement:

Copyright abuse can shut down online artists [sic]   political analysts or — as  in this case — ordinary families who simply want to share snippets of their day-to-day lives. Universal must stop making groundless infringement claims that trample on fair use and free speech.

Tal Grinblat is an Intellectual Property Attorney and Shareholder at our firm. Contact him via email: tgrinblat@lewitthackman.com or by phone: (818) 907-3284.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Wednesday
Nov272013

“She’s Crafty”: GoldieBlox, Beasties, Copyrights and Codicils

Civil Litigation AttorneyIP Litigation

 

by Nicholas Kanter & Robert A. Hull, Esq.
November 27, 2013

In 1986, New York hip hoppers the Beastie Boys released Licensed to Ill, the first rap LP to top the Billboard album chart, selling over 9 million copies in the U.S. One of the singles from the hit album was Girls. The song, in which the Beastie Boys sing about their affection for girls, is riddled with sexist lyrics, such as:

Girls - to do the dishes

Girls - to clean up my room

Girls - to do the laundry

Girls - and in the bathroom.

Seventeen years later, northern California toy company GoldieBlox Inc. is rewriting feminine roles, by selling toys meant to inspire young girls to construct, engineer and invent. The problem is they also rewrote the Beasties’ song Girls to market their products:

Girls to build the spaceship,

Girls to code the new app,

Girls to grow up knowing

That they can engineer that.

The rewritten song and accompanying video became a YouTube sensation, receiving over 8.5 million hits since being uploaded to YouTube on November 17, 2013.

In a lawsuit filed on November 21, 2013 in the Northern District of California, GoldieBlox claims the Beastie Boys threatened them with copyright infringement.

Rather than wait for the Beastie Boys to sue, GoldieBlox filed their complaint, seeking a declaratory judgment that their parody video does not infringe the rights of the Beastie Boys (and others that hold rights to the song), and constitutes fair use.

 

Fair Use: Is GoldieBlox's Version of Girls Defensible or Not?

 

GoldieBlox claims they created their song and video specifically to “make fun of the Beastie Boys song, and to “further the company’s goal to break down gender stereotypes and to encourage young girls to engage in activities that challenge their intellect, particularly in the fields of science, technology, engineering and math.” 

Based on the underlying purpose of the song and its intended effect, GoldieBlox asserts their song is protected by the Fair Use Doctrine.  

Under the Fair Use Doctrine, certain uses of another's copyright-protected work may not be considered infringement if the protected work is used for purposes of “criticism, comment, news reporting, teaching…scholarship, or research”  ( 17 U.S.C. §107). Whether a particular use qualifies as “fair use” is determined by considering four “fair use” factors, which include:

  1. The purpose and character of use – how transformative is the new material? Does the new material add new information or understanding?

  2. The nature of copyrighted work – what is the value of the work vis-à-vis the core of the copyright’s protective purposes.

  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole – this factor looks at whether the quantity of the original work used is reasonable in relation to the purpose of the copying.

  4. The effect of the use upon the potential market for or value of the copyrighted work – does the new material deprive the copyright owner of income in some way?

While GoldieBlox’s song by itself seemingly qualifies as Fair Use, the crux of the lawsuit (assuming it does not settle) will likely center on whether GoldieBlox’s use of the song to advertise and sell its retail goods causes the song to lose Fair Use protection.

 

A Brass Monkey in the Machine?

 

Complicating the matter further is the fact that one of the members of the Beastie Boys, Adam “MCA” Yauch, died last year leaving a will which provided that in no event may “any music or any artistic property created by me be used for advertising purposes.”  Another fly in the ointment was the fact that apparently, MCA hand wrote these words on his prepared will near language which prohibited MCA’s image or name from being used for advertising purposes.

It is not clear whether the added language was part of the original will or was added later. If added later, such an amendment (typically called “codicils”) must be executed with the same formalities required of the will. Those formalities include executing the codicil in the presence of witnesses, etc.

Thus, if the handwritten language was added by MCA after the execution of the will, but for example without the presence of witnesses, it could be successfully challenged. However, there seems to be no mention in the press of a specific challenge to such language. Therefore, the language was likely present at the execution of his will.

Presuming this language was valid, in order for it to be enforceable in this case, obviously MCA must own an interest in the song (i.e., the interest must be part of his “estate”).

But, if MCA owned an interest but had previously transferred this interest into, for example, a living trust, the trust would be the owner, not MCA’s “estate”). If there was no commercial prohibition language in the trust, then the will language would not apply to prohibit commercial exploitation of the trust’s interest.

Also, this will restriction would apply only to the beneficiaries of Yauch’s estate. Absent an agreement to the contrary, joint owners of a copyrighted work have an equal right to license the copyright, provided that the other joint owners get their shares of the proceeds.

Thus, if there was not such an agreement between MCA and the other Beastie Boys preventing commercial exploitation of this song, the others could independently license the song to GoldieBlox, despite the prohibition by MCA, with MCA’s estate receiving its share of the proceeds. The prohibition by MCA would likely apply to the beneficiaries of his song interest, but would not be enforceable against the other joint owners.

From the published news reports, it appears as though the others do not wish to permit GoldieBlox to use the song in this manner.  So, MCA’s wishes may indeed be carried out.

However, if the will restriction is not enforceable, MCA’s heirs may be able to license the work commercially, despite objections from the other Beastie Boys.

Ultimately, it will come down to whether the GoldieBlox version is considered a “fair use” of the song. If so, MCA could not have prevented this commercial use while he was living and cannot prevent it after his death.

 

Nicholas Kanter is a Business and IP Litigation Attorney at our firm. Contact him via email: nkanter@lewitthackman.com.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Monday
Jun032013

Oprah Winfrey’s Fair Use Defense Rejected

Business LitigationSan Fernando Valley Business Litigation Lawyer

 

by Nicholas Kanter

818.907.3289

 

On Friday, the Second Circuit ruled that the owner of a motivation services business (Simone Kelly-Brown) can continue with her trademark infringement lawsuit against media mogul Oprah Winfrey.

Kelly-Brown owns a trademark registration for “Own Your Power.”  She uses the trademark in connection with her motivational services business. After Kelly-Brown applied to register her trademark, Oprah (along with her production company, publisher and others) produced a magazine, event and website using the phrase “Own Your Power.”

Kelly-Brown sued Oprah and others claiming the unauthorized use of her trademark constituted infringement, false designation of origin and other Lanham Act claims. The District Court dismissed Kelly-Brown’s claims, finding Oprah’s use of the mark was fair use. Kelly-Brown appealed, and the Second Circuit reversed, finding Oprah did not show that her use of “Own Your Power” was fair use.

 

Fair Use: What it Takes

 

The Court found the defendant must show the following to prove fair use: “that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.”  The Court ruled Oprah did not satisfy any of these three elements. Here’s why:

Use as a Mark: To determine if Oprah used the words as a trademark, the court asked whether she used “Own Your Power” as a symbol to attract public attention. The Court found Oprah used the phrase prominently in several unique instances, including: the cover of the October 2010 issue of OWN; in connection with an Own Your Power event; promotion of the Own Your Power event, among other uses.

In a Descriptive Sense: In analyzing the use of the phrase on the magazine cover, the Court found that the phrase did not describe the contents of the magazine, as opposed to other phrases on the cover (e.g., How to Tap Into Your Strength, Focus Your Energy, etc.)  which were displayed on the cover in smaller print and did describe the contents of articles in the magazine.

Good Faith: Finally, the Court found Kelly-Brown alleged facts to suggest Oprah had knowledge of her “Own Your Power” trademark and chose to use it anyway. Specifically, Kelly-Brown alleged that Oprah (through her production company Harpo) obtained an assignment of rights from the prior owner of the registered “OWN ONYX WOMAN NETWORK” trademark during the creation of Oprah’s “OWN” network “to avoid an infringement action from the mark’s original owner.”  

Kelly-Brown further alleged that this transaction suggests that Oprah conducted a trademark search for the word “Own,” and that such search would have discovered Kelly-Brown’s “Own Your Power” mark. Thus, the Court concluded Oprah could have had knowledge of Kelly-Brown’s mark, and thus her use was not in good faith.

Because the Second Circuit found Oprah could not satisfy the elements of a fair use defense, the Court ruled that Kelly-Brown can continue with her trademark infringement claim.

Nicholas Kanter is a Trademark Dispute and Litigation Attorney at our Firm. Contact him via email, for more information regarding intellectual property and trademark enforcement: nkanter@lewitthackman.com.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
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