On this day in 1987, the rap group the “Fat Boys” obtained summary judgment in a $1 billion copyright infringement case brought by another rap group called “The Human Effect.” In Human Effect Records v. Sutra Records, The Human Effect claimed that the Fat Boys infringed the song “We Like The Girls.” In particular, the group claimed that a “gasping” sound used in six of the Fat Boys’ songs infringed the gasping sound found in The Human Effect song. However, the version of “We Like The Girls” registered with the Copyright Office contained no gasping. Because the registered version did not include any of the allegedly infringing material, the Federal District Court found no infringement and granted summary judgment to the Fat Boys.

On this day in 1989, the U.S. Supreme Court held that a ban on dial-a-porn phone messages violated the First Amendment. In Sable Communications of California, Inc. v. FCC, the Court declared unconstitutional § 223(b) of the Communications Act of 1934, which prohibited obscene or indecent telephone conversations. The Court upheld the part of the statute applicable to obscene speech because the First Amendment does not extend to obscene speech. However, the Court overturned the part of the statute that prohibited adult access to indecent messages, holding that “sexual expression which is indecent but not obscene is protected.”

The Court distinguished its ruling in FCC v. Pacifica Foundation, a case in which the Court upheld the FCC’s ability to prohibit and punish indecent language over radio and TV (the case famously involved George Carlin’s monologue on the “seven dirty words“). Unlike Pacifica, the FCC rule in this case was a total ban on indecent material. The Court further distinguished the two cases by noting that Pacifica dealt with radio and TV, which are “uniquely pervasive and “uniquely accessible to chidren,” whereas this case addressed dial-in services, which do not have a similar captive audience problem. Callers are not generally unwilling listeners. Justice White, writing for the Court, said:

Placing a telephone call is not the same as turning on a radio and being taken by surprise by an indecent message. Unlike an unexpected outburst on a radio broadcast, the message received by one who places a call to a dial-a-porn service is not so invasive or surprising that it prevents an unwilling listener from avoiding exposure to it.

The Court noted that while Congress may regulate the content of constitutionally protected speech in order to promote a compelling interest, the statute was not the least restrictive means of accomplishing Congress’s interest in protecting the well-being of minors.

On this day in 2003, a federal appeals court held that a painting of Tiger Woods did not infringe on the golfer’s trademark or violate his right of publicity. In ETW Corp. v. Jireh Pub., Inc., the painting, and limited edition prints, of Tiger Woods at the 1997 Masters Tournament constituted trademark infringement, trademark dilution, unfair competition and false advertising, and a violation of Woods’s right of publicity. In its evaluation of the trademark infringement claim under 15 U.S.C. § 1114, the court said that the use of the mark was protected by fair use because the artist used the mark in a descriptive sense and in good faith. A celebrity’s name may be used in the title of a work if there is some artistic relevance. Here, the artist merely used Woods’s name on the back of the envelopes containing the prints, and in literature describing them. Rick Rush, the artist, was clearly identified as the source of the prints.

The court also refused to recognize a trademark infringement claim based on the unauthorized use of Woods’s likeness under § 43 of the Lanham Act, 15 U.S.C. § 1125(a). The court held that as a general rule a person’s image or likeness cannot function as a trademark. Woods’s name was a registered mark, but not any image or likeness of him. Although the Lanham Act does allow for a claim of infringement for an unregistered mark, the court refused to recognize the images and likeness of Woods as a protectable trademark because they do not perform the trademark function of distinguishing and identifying the source of goods. The court reasoned:

“[T]here are undoubtedly thousands of images and likenesses of Woods taken by countless photographers, and drawn, sketched, or painted by numerous artists, which have been published in many forms of media, and sold and distributed throughout the world. No reasonable person could believe that merely because these photographs or paintings contain Woods’s likeness or image, they all originated with Woods.”

For the same reasons, the dilution claim under 15 U.S.C. § 1125(c) also failed.

In determining whether the painting implied a false endorsement by Woods, the court applied the Rogers test. It found that any risk of false endorsement caused by the painting was outweighed by the interest in artistic expression.

Similarly, with respect to the right of publicity claim, the court applied free speech principles. It balanced the First Amendment interests of the paintings against Woods’s right of publicity. The court found that the artist’s work had “substantial informational and creative content” which outweighed any adverse effect on the market for Woods’s name and likeness. The court further held that the artist’s work did not try to merely capitalize on Woods by reproducing a literal depiction of him, but, rather, the work had substantial transformative elements that entitled it to the full protection of the First Amendment.

The painting at issue, titled “The Masters of Augusta, can be found here.

If you are interested in music licensing in the digital world, Davis Wright Tremaine’s Broadcast Law Blog links to a memo and set of PowerPoint slides that together provide a very helpful and concise overview of the subject. The materials are from a seminar that David Oxenford and Rob Driscoll, partners at DWT, recently conducted at a program presented by the New York State and New York City bar associations.

The memo, “The Basics of Using Music in Digital Media,” can be found here. The slides can be downloaded from the link in this post.

According to TheWrap, the Writers Guild of America (WGA) and Screen Actors Guild (SAG) have asked IMDb, the popular Internet movie database, to remove the birth dates of its members (SAG is only asking that the site remove birth dates for its members who are not yet stars). The guilds are concerned that posting this information could lead to age discrimination. In an industry that has historically favored the young over the middle-aged, such fears may be well-founded – the WGA recently settled a major 10-year age discrimination suit against the networks, studios, and talent agencies. Nevertheless, the guilds may need to prepare themselves for a tough fight. Currently, IMDb will only remove a birth date if it is inaccurate, and the site’s co-founder believes that IMDb has a responsibility to its users to provide the most comprehensive data available.

On this day in 2003, Senator Orrin Hatch advocated for a law that would allow copyright holders to remotely destroy the computers of those who illegally download music, movies, and other copyrighted material. During a hearing on security risks related to P2P file sharing, Hatch had the following exchange with Randy Saaf, President of Mediadefender, Inc and Derek Broes, EVP of Worldwide Operations, Brilliant Digital Entertainment:

Chairman Hatch. . . I have heard that with regard to piracy problems and the stealing of music and copyrighted material, that there is now a software or at least a methodology of giving a warning that what you are doing is an illegal act, giving another warning, and then finally just destroying their computer. Are you aware of that, the warning that we are going to destroy your computer if you keep doing this illegal act? Can somebody help me to understand that? . . .

Mr. Broes. . . . [T]he issue here and our feeling is that gradually changing user behavior is the approach to this, and that is critical, and this goes to as far as the user education . . . We need to take greater care in educating ourselves. . .

Chairman Hatch. That has been very helpful, but . . . Can you destroy their set in a home?

Mr. Saaf. Yes. I think that is not something anybody is really interested in doing.

Chairman Hatch. Well, I am. I am interested in doing that. . . I am very interested. That may be the only way you can teach somebody about copyright. . .
. . . [I]f we can find some ways to do this short of destroying their machines, I would like to know what it is. But if that is the only way, then I am all for destroying their machines and letting them know. . . After you have a few hundred thousand of those, I think people will grow up and realize.

You can find the complete transcript here

Last week, the Ninth Circuit held that the movie “The Last Samurai” did not infringe the copyright of a screenplay of the same name. In Benay v. Warner Bros. Entertainment, Inc. (pdf), the court considered whether a screenplay written by Aaron and Matthew Benay was substantially similar to the Warner Bros./Bedford Falls film “The Last Samurai,” starring Tom Cruise. The Benays, who had pitched the screenplay to Richard Solomon, president of production at Bedford Falls, claimed that important parts of the screenplay were copied. The defendants claimed that the film was created independently of the screenplay. Because there was no evidence of direct copying, the court looked at whether there was a substantial similarity between the “protected elements” of the screenplay and “comparable elements” of the film.

Under the Ninth Circuit’s two-part similarity test, substantial similarity must be proven under both the “intrinsic test” and the “extrinsic test.” The extrinsic test is an “objective comparison of specific expressive elements.” It is based on specific elements such as similarities between “the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in two works.” The intrinsic test is a “subjective comparison that focuses on ‘whether the ordinary, reasonable audience’ would find the works substantially similar in the ‘total concept and feel of the works.’“ Because the case was brought on an appeal of a grant for summary judgment, the court only applied the extrinsic test (The intrinsic test must be left to a trier of fact, and therefore cannot be applied at the summary judgment phase; however, because a defendant who fails the extrinsic test cannot survive a motion for summary judgment, only the extrinsic test was necessary at this stage).

The court found that there were a number of similarities between the film and the screenplay:

Both have identical titles; both share the historically unfounded premise of an American war veteran going to Japan to help the Imperial Army by training it in the methods of modern Western warfare for its fight against a samurai uprising; both have protagonists who are authors of non-fiction studies on war and who have flashbacks to battles in America; both include meetings with the Emperor and numerous battle scenes; both are reverential toward Japanese culture; and both feature the leader of the samurai rebellion as an important foil to the protagonist. Finally, in both works the American protagonist is spiritually transformed by his experience in Japan.

Nevertheless, the court found that the similarities were comprised of unprotectable elements, such as stock scenes, historical facts, and characteristics that “flow naturally from the works’ shared basic plot premise.” The court found few protectable similarities between the two works. The court said that once the unprotectable elements are removed, the film and screenplay are not sufficiently similar to pass the extrinsic test (e.g., citing differences between the two works, the court found the narrative of the Benays’ screenplay to be largely a revenge story, while the film was a “captivity narrative” reminiscent of “Dances With Wolves”; the court also found that the mood and pace of the two works differed – the screenplay was “triumphant” and “fast-paced,” while the film was more “nostalgic and reflective”).

However, not all is lost for the Benays. The court reversed the lower court’s grant of summary judgment for the breach of contract claim. In their suit, the Benays asserted a claim for an implied-in-fact breach of contract. Under California law, to establish a case for breach of an implied-in-fact contract based on the submission of a screenplay, the plaintiff must show that he or she:

(1) submitted the [s]creenplay for sale to [d]efendants; (2) . . . conditioned the use of the [s]creenplay on payment; (3) [d]efendants knew or should have known of the condition; (4) [d]efendants voluntarily accepted the [s]creenplay; (5) [d]efendants actually used the [s]creenplay; and (6) the [s]creenplay had value.

The defendants contended that the Benays failed to establish the fifth element, actual use; that there was no privity of contract; and that the statute of limitations had run. The court was not convinced. An implied-in-fact breach of contract claim does not require the same showing of substantial similarity as a copyright claim. In idea-submission cases such as this one, the plaintiff is not required to prove substiantial similarity of copyright-protected elements. Rather, the plaintiff may show use by proving elements not protected by copyright law. Because the two works contain a number of similarities (some of which are not otherwise protected under copyright law), the court reversed and remanded the breach of contract claim.

The court did not reach the question of whether privity existed between the parties, and left it to the lower court to decide when the cause of action accrued for the statute of limitations defense.

On this day in 2005, the Second Circuit held that Island Def Jam and its former executive, Lyor Cohen, were not financially responsible for a failed joint venture between producer Irv Gotti, Ja Rule and TVT Records.

In TVT Records v. Island Def Jam Music Group, TVT Records sued Island Def Jam (“IDJ”) for tortious interference, fraudulent concealment, breach of contract, and copyright infringement. Island Def Jam had agreed to permit Ja Rule and Gotti, who were signed exclusively to IDJ, to record an album for TVT as part of the group Cash Money Click (“CMC”). Ja Rule had been a member of CMC prior to his successful career with IDJ. Gotti had helped recruit and sign CMC to TVT when Gotti was employed by TVT (In 1999, Gotti entered a joint venture with IDJ to form Murder, Inc., through which Gotti produce records by a number of successful artists including Ja Rule). In its suit, TVT claimed that IDJ and Cohen never actually intended to cooperate with TVT in the production of the new CMC album. Rather, they intended to sabotage it. They had only consented to appease Ja Rule and Gotti so that they could successfully renegotiate Gotti’s contract with IDJ. The court held that IDJ breached its agreement with TVT. However, it found no tortious interference, fraudulent concealment, or copyright infringement.

Under New York law, a tortious interference claim requires a showing that “a valid contract exists and that a third party with knowledge of the contract intentionally and improperly procured its breach.” The third party may not be a party to the agreement. The court found that IDJ was not a “stranger to the agreement,” but rather was a party to it, and, therefore, there could be no tortious interference. TVT’s fraudulent concealment claim failed because IDJ did not conceal any information that, if known by TVT, would have made the agreement less valuable to TVT. Rather, IDJ merely failed to perform. The court found that there was no distinction between TVT’s fraudulent concealment claim and its breach of contract claim. Therefore, the court found only contract damages, but no tort damages. TVT’s copyright infringement claim failed because TVT never rescinded its license to IDJ after IDJ breached the agreement. A breach of contract gives rise to the right of rescission, but the rescission is not automatic upon breach.

On this day in 2007, a California District Court ruled that the television show Family Guy did not infringe the copyright to Carol Burnett’s Charwoman character from the Carol Burnett Show. In Burnett et al v. Twentieth Century Fox Film Corp., Carol Burnett sued Fox for airing an episode of Family Guy, in which a character resembling Charwoman from the Carol Burnett show is shown mopping the floor of a porn shop. Other characters in the episode made sexually offensive remarks about Burnett. Burnett claimed copyright infringement, violation of the Lanham Act, violation of California’s right of publicity, and common law misappropriation of name and likeness. The court recognized the offensiveness of the segment, but held that the use of the Charwoman character was a parody, and therefore constituted fair use. On the Lanham Act claim, the court found no likelihood of confusion. The court dismissed the misappropriation and right of publicity claims for lack of subject matter jurisdiction.

On this day in 2003, the Supreme Court held that § 43 of the Lanham Act does not prevent the unaccredited copying of uncopyrighted works. In Dastar Corp. v. Twentieth Century Fox Film Corp., the Court considered whether the false origin of goods language in § 43(a)(1)(A) of the Lanham Act is triggered by a false designation of a creator or producer of a communicative product. Justice Scalia, writing for the Court, said that the phrase “origin of goods” in the Lanham Act refers to the producer of the tangible goods offered for sale, not to the author or “any idea, concept, or communication embodied in those goods.” The Court said that holding otherwise “would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do.”