Time Warp: October 3, 2007 (Family Guy)

Posted by Ken Davidson on Oct 3rd, 2011

On this day in 2007, the copyright owner of the song “When You Wish Upon A Star” sued the makers of Family Guy for copyright infringement. In Bourne Co. v. Twentieth Century Fox Film Corp., Bourne claimed that the song “I Need A Jew” was a “thinly-veiled copy” of the music from “When You Wish Upon A Star,” coupled with new anti-Semitic lyrics. The U.S. Federal Court in the Southern District of New York dismissed the case and held that “I Need A Jew” was a parody of “When You Wish Upon A Star” and constituted fair use under the U.S. Copyright Act.

In the Family Guy episode titled “When You Wish Upon A Weinstein,” the father character, Peter Griffin, hears his friends talk about how people with Jewish-sounding names have helped them with their finances. He then decides that he too needs to hire a Jewish person to manage his family’s finances. In a scene very similar to the one in Pinocchio (the movie for which the original song was written) in which Gepetto sees a star in the sky and wishes for a real boy, Peter looks out his window, sees a lone star in the sky and sings the song with the following lyrics:

Nothing else has worked so far,
So I’ll wish upon a star,
Wondrous dancing speck of light,
I need a Jew.

Lois makes me take the rap,
‘Cause our check-book looks like crap,
Since I can’t give her a slap,
I need a Jew.

Where to find a Baum or Steen or Stein
To teach me how to whine and do my taxes?
Though by many they’re abhorred,
Hebrew people I’ve adored.

Even though they killed my Lord*
I need a Jew.

*[The court noted that in an alternate version of the song this line was changed to “I don’t think they killed my Lord.”]

Fox originally decided not to air the episode due to the controversial religious content. However, the episode was later distributed on DVD by Fox Home Entertainment, telecast by the Cartoon Network, and eventually televised by Fox Broadcasting.

The defendants claimed that the use of the song was a parody in two ways: 1) as a comment on the “saccharine sweet,” “innocent” and “wholesome” worldview presented in and represented by “When You Wish Upon a Star,” and 2) by evoking “the song most associated with Walt Disney and his company” commenting “on the song while simultaneously making a sharp point about Walt Disney’s reputed anti-Semitism.” The plaintiff claimed that the new song was being used as satire, merely to comment on bigotry and racism generally. Copyright law treats parody and satire differently. The distinction between the two usually turns on the object of the “comment” made by the allegedly infringing work. A parody comments on the original copyrighted work itself. A satire may use a copyrighted work, but its aim is to comment about something else. The fair use defense provides far greater protection for parodies than satires.

The court found that by juxtaposing the “saccharin sweet” song “When You Wish Upon a Star” with “I Need a Jew” the defendants did more than just comment on racism and bigotry generally. Rather, the court said, the defendants’ use of “When You Wish Upon a Star” “calls to mind a warm and fuzzy view of the world that is ultimately nonsense; wishing upon a star does not, in fact, make one’s dreams come true.” The court further agreed that the song makes a comment about the widespread belief that Walt Disney was anti-Semitic. The defendants thought it would be “perfect, cutting commentary to use the iconic song most closely-associated with Walt Disney, Wish Upon a Star, in a parodic reverie where the main character ‘wishes upon a star’ for, of all things, a Jew,” something an anti-Semite would never do.

Because parody alone is not sufficient for a court to find fair use, the court analyzed the four fair use factors set out in Section 107 of the Copyright Act: 1) purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work. In reviewing the first factor, the court found that the work added something new to the original and was transformative because the lyrics of the two songs were almost entirely different, and were “strikingly different” in tone and message. In reviewing the second factor, the court acknowledged that the original copyrighted work was a “creative expression” that fell within the “core of the copyright’s protective purposes,” but the court placed little weight in this second prong because the very nature of a parody is to copy publicly known, expressive works. In reviewing the third factor, the court found that even if the defendants took substantially all of the song, “that borrowing was necessary to allow the parodic character of their work to come through.” Lastly, the court found that the fourth factor weighed in favor of the defendants because the new song did not usurp the market of the original work. The plaintiff had argued that such widespread unlicensed uses of the work would deprive the copyright holder of significant licensing revenues. However, the court responded to this claim by noting:

Plaintiff argues for a reading of the fourth factor that would swallow the rule entirely. All uses of copyrighted work under a fair use rationale deprive the owner of licensing fees. If a parody of the original work would usurp the market for licensing other comedic uses of the original work, then all parodies would fail under this prong of the analysis. The Supreme Court clearly intended otherwise as did Congress in creating an opportunity for fair use under 17 U.S.C. § 107.

The court found that factors one, three and four weighed heavily in favor of fair use. It afforded little weight to the second factor. Consequently, the court held that the defendants’ use of “When You Wish Upon A Star” was a parody that constituted fair use.

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Blawgertainment Is on Hiatus

Posted by Ken Davidson on Aug 2nd, 2011

Blawgertainment is on hiatus. We’ll be back after Labor Day. A safe and relaxing August to all.

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The Learning Company has sued Zynga for infringing its trademark for “The Oregon Trail” video games. Zynga intends to sell its own version of the classic frontier-era game under the name “FrontierVille Oregon Trail.” According to the complaint, Zynga was well aware of the “The Oregon Trail” game because the two parties previously held discussions about collaborating on a Facebook version of the game. The Learning Company had even gone so far as to share its development plans, sales and brand history with Zynga. The complaint claims that Zynga’s version has the same name, same theme, similar cartoon look and feel, and the same advertising audience. The characters in both games even suffer the same maladies (though Zynga refers to dysentery as the “Rocky Mountain Scoots”). The alleged facts imply a high likelihood of confusion.

Professor Eric Goldman has posted the complaint here.

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Forbes reports that the New York Times has asked Twitter to close an account that tweets a link to every story on the Times’s website. The Twitter feed, FreeNYTimes, allows users to do an endrun around the NYT’s impending paywall. At the end of the month, the Times will start charging a fee to access its digital content. However, users will be allowed to access up to 20 articles per month without having to pay a monthly fee. The Times will allow users to exceed this limit if they link in from other sites, such as from blogs or Twitter.

The Times claims that the feed is in violation of its trademark rights. The twitter feed uses the Times logo, and Forbes notes that the company uses the Times’s own API to automate the process. Trademark infringement requires a likelihood of confusion.

As of this writing, the account is still up. It will be interesting to see how this pans out.

UPDATE: FreeNYTimes has made a couple changes to further avoid any confusion. It now refers to itself as “NOT New York Times,” and it describes the feed as the “Unofficial NYTimes API feed.”

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Time Warp: March 11, 1997 (Fair Use in News Reporting)

Posted by Ken Davidson on Mar 11th, 2011

On this day in 1997, the 9th Circuit U.S. Court of Appeals held that a television station’s unauthorized broadcast of footage from the Rodney King riots was not fair use. In Los Angeles News Service v. KCAL-TV Channel 9, KCAL-TV — a local Los Angeles news station — broadcast footage of the beating of Reginald Denny, who was pulled from his truck and severely beaten by protesters during the 1992 Los Angeles riots. The plaintiff, Los Angeles News Service, had shot the original footage from a helicopter with its own crews. KCAL had sought a license to use the footage, but the plaintiff refused. KCAL then copied the footage, superimposed its own logo on the video and rebroadcast a portion of the footage. KCAL claimed that its rebroadcast of the footage was fair use, and therefore not copyright infringement. The court disagreed. It reviewed the fair use factors set out in 17 U.S.C. § 107 of the Copyright Act:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

In evaluating the first factor, “the purpose and character of the use,” the court acknowledged that KCAL was reporting news, which weighed heavily in the defendant’s favor. However, the fact that both the plaintiff and defendant were in the business of “gathering and selling news” mitigated the weight of KCAL’s fair use defense. The court cited a number of other facts that further tipped the balance towards the plaintiff. KCAL stood to profit from the exploitation of the licensed footage. It used the footage for the same purpose it would have had it paid for the license. Additionally, it did not attribute the footage to the plaintiff or add anything new or transformative to the footage itself — KCAL merely copied the tape and superimposed its logo on the image as if it were its own. The court also noted that KCAL could have licensed alternate footage but chose to use the footage taken by the plaintiff because it was the best version shot from the best vantage point, not because it was the only footage of the event.

The second factor, “the nature of the copyright work,” weighed in favor of KCAL because the work was largely factual in nature, and it had already been published before KCAL’s use of it.

Conversely, the court found that the third factor, “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” weighed in favor of the plaintiff because KCAL used the most valuable part of the footage. It did not matter that KCAL only used a small portion of the original footage – what mattered is that it used the “heart” of the tape.

The fourth factor, “the effect of the use upon the potential market for or value of the copyrighted work,” also weighed against a finding of fair use. The court said that KCAL’s use of the footage without a license would destroy the plaintiff’s market.

Therefore, the court reversed the lower court’s grant of summary judgment.

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Godzilla Sues Honda for Trademark Infringement

Posted by Ken Davidson on Feb 11th, 2011

The owner of the Godzilla trademark, Toho Co. Ltd, has sued Honda for trademark infringement. According to the complaint filed last week in the U.S. District Court in Los Angeles, a Honda ad for the Odyssey minivan infringed the mark because it included images of Godzilla in a movie playing on a television screen in the backseat of the van. The ad agency that created the campaign, Rubin Postaer & Associates, obtained the license to use the clip from the film in which Godzilla appeared (the movie the “Bad News Bears Go to Japan“), but did not get permission to use the Godzilla trademark. The suit alleges trademark infringement, copyright infringement, unfair competition and unjust enrichment.

Rubin Postaer & Associates and Thought Equity Motion, the licensing company that licensed the “Bad News Bears” clip, were also named as defendants.

Here is the commercial. Judas Priest fans, enjoy:

Toho Co. Ltd. v. American Honda Motor Co. et al., 2:11-cv-01013-SVW-CW (C.D. Cal. complaint filed Feb. 2, 2011).

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On this day in 2005, the Rock and Roll Hall of Fame sued the Jewish Rock and Roll Hall of Fame for trademark infringement. In Rock and Roll Hall of Fame and Museum Inc. v. Jewish Rock and Roll Hall of Fame Inc., the famous Cleveland, Ohio museum sought to stop the defendants’ use of the trademark in connection with their virtual jewish rock and roll museum. The website, www.jewsrock.org, had not yet launched but its stated mission was to “highlight the many and crucial Jewish contributions to the greatest pop culture force in modern times, Rock & Roll.” The plaintiff had previously sent a cease and desist letter, but the defendants had refused to comply. The defendants had also previously filed a federal trademark application for their mark that had been rejected by the U.S. Patent and Trademark Office based on a likelihood of confusion with the plaintiff’s mark. The suit alleged trademark infringement, trademark dilution and unfair competition.

The defendants offered to change their name to “Jewish Rock & Roll Challah Fame,” but the plaintiff refused. Eventually, the parties settled.

The founders of the museum (and named defendants) were Jeffrey Goldberg, David Segal, and Allen Goldberg.

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Time Warp: December 4, 2008 (Joe Satriani v. Coldplay)

Posted by Ken Davidson on Dec 4th, 2010

On this day in 2008, guitar virtuoso Joe Satriani sued Coldplay for copyright infringement. In Satriani v. Martin et al., the guitarist alleged that Coldplay’s hit song “Viva La Vida” infringed his song “If I Could Fly.” The two parties settled in 2009.

You can listen to a comparison of the two songs here.

A copy of the complaint can be found here.

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Time Warp: November 15, 2007 (Barry Bonds)

Posted by Ken Davidson on Nov 15th, 2010

On this day in 2007, Barry Bonds was indicted for making false statements to a grand jury regarding his use of steroids.

In United States v. Bonds, prosecutors charged the San Francisco Giants slugger, and all-time home run leader, of committing perjury and obstruction of justice by lying under oath to a federal grand jury during its investigation of the BALCO Affair, in which Balco Laboratories was investigated for providing professional athletes with steroids. According to the indictment, when asked whether Balco’s Greg Anderson ever gave Bonds anything that Bonds knew to be steroids, Bonds said, “Not that I know of.” After further questioning, Bonds continued to deny ever knowingly taking any steroids. According to additional counts in the five-count indictment, Bonds also claimed that no one other than his physicians injected him with anything, and that his use of various topical substances didn’t begin until 2003, later than Balco’s records indicated. Bonds had been given immunity for any statements he made during his testimony. Neither his testimony, nor any information derived from it, could be used against him in any criminal case. However, this immunity did not apply to perjury or making false declarations. The indictment charged Bonds with violating 18 U.S.C. 1623(a) – Perjury, and 18 U.S.C. 1503 – Obstruction of Justice. The trial is set for March 21, 2011.

A copy of the indictment can be found here (pdf)

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Time Warp: October 16, 2007 (Fantasy Sports)

Posted by Ken Davidson on Oct 16th, 2010

On this day in 2007, a federal court held that the First Amendment protects the right of fantasy sports leagues to use statistics and players’ names without permission. In C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., the U.S. Court of Appeals for the 8th Circuit considered whether CBC, a fantasy sports company, had the right to use, without license, Major League Baseball players’ names and information in the company’s fantasy sports leagues. The court found that CBC’s use of the players’ names violated their rights of publicity. However, the court held that CBC’s First Amendment rights in offering fantasy baseball products trumps the players’ rights of publicity. The court said that because the players’ names and information were “all readily available in the public domain,” those names should be available for use in commercial fantasy sports without compensation to the players.

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Time Warp: October 6, 1983

Posted by Ken Davidson on Oct 6th, 2010

On this day in 1983, a federal court held that the television show “The Greatest American Hero” did not infringe the rights to Superman. In Warner Bros. Inc. v. American Broadcasting Companies, Inc., the Second Circuit Court of Appeals considered whether the character, Ralph Hinkley, in “The Greatest American Hero,” was sufficiently similar to Superman to constitute copyright infringement or unfair competition. Warner Bros. claimed that Ralph Hinkley was substantially similar to Superman and that the television show copied the “indicia” of Superman, which the court described as “his costume, his abilities, the well-known lines associated with him — in short, anything occurring in the Hero works that might remind a viewer of Superman.” The protagonist of the TV series had Superman-like abilities, and the show frequently referenced Superman. The creator of the show had even described it as being about “the ordinary” guy who becomes “Superman.” However, the court held that a reasonable jury could not conclude that Hinkley was substantially similar to Superman:

The total perception of the Hinkley character is not substantially similar to that of Superman. On the contrary, it is profoundly different. Superman looks and acts like a brave, proud hero, who has dedicated his life to combating the forces of evil. Hinkley looks and acts like a timid, reluctant hero, who accepts his missions grudgingly and prefers to get on with his normal life. Superman performs his superhuman feats with skill, verve, and dash, clearly the master of his own destiny. Hinkley is perplexed by the superhuman powers his costume confers and uses them in a bumbling, comical fashion. In the genre of superheros, Hinkley follows Superman as, in the genre of detectives, Inspector Clouseau follows Sherlock Holmes.

The court similarly found no infringement in the show’s use of lines mentioning Superman or the use of phrases associated with him. It noted that such lines were used to underscore the differences “to humorous effect,” not to create a similarity.

With regards to the unfair competition claims, the court found no likelihood of confusion or “passing off” under § 43(a) of the Lanham Act. The lack of substantial similarity indicated that there was no likelihood of confusion as to the source of the show. The court further held that there was no “passing off” because an average television viewer would not be misled into believing that “The Greatest American Hero” was produced or authorized by those responsible for making the Superman films.

Note: Wholly unrelated to the merits of this case, I think the theme song to “The Greatest American Hero” is one of the finest in television history.

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Time Warp: October 1, 2009

Posted by Ken Davidson on Oct 1st, 2010

On this day in 2009, David Letterman announced on air that he was a victim of an extortion attempt. Robert Joel Halderman, a CBS News employee and Emmy Award winner, had given Letterman, host of the “Late Show With David Letterman,” a one-page treatment of a screenplay, which revealed that Letterman had sexual encounters with his employees at his World Wide Pants production company. Halderman demanded $2 million to stay quiet; he subsequently pled guilty to attempted grand larceny in the second degree, and received a 6-month jail sentence.

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Time Warp: September 17, 1787

Posted by Ken Davidson on Sep 17th, 2010

On this day in 1787, delegates to the Constitutional Convention in Philadelphia signed the U.S. Constitution. The framers recognized the importance of promoting the public’s interest in innovation and the arts. Article I, Section 8, Clause 8 give Congress the power:

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Happy Constitution Day!

The ABA and the National Constitution Center have provided online educational resources here and here, respectively.

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Time Warp: September 6, 1985 (John McEnroe)

Posted by Ken Davidson on Sep 6th, 2010

On this day in 1985, the New York Supreme Court held that John McEnroe was not liable for threatening, and then taking a swing towards, a fan at the U.S. Open. In Schneider v. McEnroe, the court considered whether McEnroe was liable for intentional infliction of emotional distress, assault, and battery. During a match at the U.S. Open, a fan repeatedly cheered for McEnroe’s opponent. McEnroe confronted the fan throughout the match, asking him if he had anything better to do than cheer McEnroe’s opponent, if he was going to cheer McEnroe’s opponent all day, etc. After the fan answered that he was going to continue to cheer for McEnroe’s opponent and that he didn’t have anything better to do, McEnroe called the fan “a fuckin’ asshole.” After the fan continued to cheer against McEnroe, McEnroe shouted, “You are sick, you are sick, you are ill, you are ill. I want to fight you, fight me now, meet me later. I am going to get you.” Shortly after this tirade, McEnroe made a motion with his arm towards the fan, described by the court as “sw[inging] his left arm in an upward movement in what might be described as a left-handed bowler’s follow-through or 1/2 of a two-handed obscene gesture.” As a result of the gesture, some rosin was released from McEnroe’s hand; a speck landed in the plaintiff’s eye. The court found McEnroe’s behavior to be childlike, ill-mannered, and unimaginative, but not actionable.

Intentional infliction of emotional distress requires that conduct be “so outrageous in character, and so extreme in degree, as to go beyond all possible bounds of decency and to be regarded as atrocious and utterly intolerable in a civilized community.” The court said that McEnroe’s behavior was “shabby,” but his conduct did not rise to the level required to satisfy intentional infliction of emotional distress.

Assault requires that the defendant be placed “in apprehension of imminent harmful or offensive contact.” Mere threats or words are not enough. The court said that there was no indication that the plaintiff had any doubts about his safety during these incidents. Therefore, McEnroe could not be held liable for assault.

Battery requires intentional contact that is harmful or offensive to the plaintiff. “Harmful” is defined as “conduct which causes pain or illness.” “Offensive” is defined as that which “offends a reasonable sense of personal dignity.” The court found that the intentional contact element was satisfied because a speck of rosin got into the plaintiff’s eye. However, the court said that the contact was neither harmful nor offensive. The contact was not harmful because the plaintiff suffered no injury to his eye other than minimal discomfort. The contact was not offensive because a speck of rosin in the eye does not offend a reasonable sense of personal dignity. Therefore, an action for battery could not be sustained, and the $6 million suit was dismissed.

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Yesterday, the U.S. Court of Appeals for the 9th Circuit held that Eminem’s recording contract requires Universal Music Group to pay a 50% royalty rate on the artist’s digital downloads and ringtones. In 1998, F.B.T. Productions, the label that had originally signed Eminem, entered into an agreement with Aftermath Entertainment (Dr. Dre’s record label and a subsidiary of Universal Music Group). The agreement transferred Eminem’s exclusive recording services to Aftermath. The issue in this case was whether the “Records Sold” provision or the “Masters Licensed” provision of this agreement should be applied in determining the royalty rate for permanent downloads and “mastertones” (ringtones) of Eminem’s songs. The Records Sold provision requires Aftermath Entertainment to pay a royalty rate between 12% and 20% on “full price records sold in the United States … through normal retail channels.” The Masters Licensed provision states, “[n]otwithstanding the foregoing,” Aftermath is required to pay 50% of net receipts “[o]n masters licensed by [Aftermath] … to others for their manufacture and sale of records or for any other uses.” UMG claimed that the “Records Sold” provision should apply. F.B.T. claimed that the Master License provision is unambiguous and should apply. The Court agreed with F.B.T:

[T]he Masters Licensed provision explicitly applies to (1) masters (2) that are licensed to third parties for the manufacture of records ‘or for any other uses,’ (3) ‘notwithstanding’ the Record Sold provision. This provision is admittedly broad, but it is not unclear or ambiguous.

The Court noted that the word “notwithstanding” means that even if digital downloads could fall within the scope of the Records Sold provision, the 50% rate would apply if the Masters Licensed provision is satisfied – i.e., if Aftermath licensed an Eminem master to a third party for any use.

The Records Sold provision would only apply in instances where there was an actual sale by Aftermath. The Court said that in the case of digital downloads or ringtones, no sale by Aftermath took place. Rather, the masters are licensed by Aftermath to a third party, such as iTunes, for the third party to sell downloads and ringtones:

Aftermath did not ‘sell’ anything to the download distributors. The download distributors did not obtain title to the digital files. The ownership of those files remained with Aftermath. . .

Therefore, because there was no ambiguity in the contractual language, because no sale by Aftermath took place, and because the terms of the Masters Licensed provision were satisfied, the Court held that Aftermath is obligated to pay the 50% royalty rate under the Masters Licensed provision.

UMG has said that it will request a full rehearing from the 9th Circuit.

You can access the opinion to the case, F.B.T. Productions, LLC v. Aftermath Records, here

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