Congratulations to two Bone McAllester Norton PLLC clients – the iconic America brands of MoonPie and RC Cola – who recently won a major legal victory at the Tennessee Court of Appeals, which affirmed the trial court’s dismissal of the complaint for lack of subject matter jurisdiction based on complete preemption by the Copyright Act. Wells v. Chattanooga Bakery, Inc., No. M2013-00935-COA-R3-CV (Tenn. Ct. App. Mar. 25, 2014). I was honored to represent the successful parties in this appeal.
Over 30 years ago, Chattanooga Bakery, Inc. (CBI), which manufactures and distributes MoonPie, hired an advertising agency to create a nostalgic-looking brochure to use in marketing MoonPie. The first page of the brochure features a black and white photograph of an unidentified young boy holding a MoonPie while his dog jealously looks up at him. As the Court noted, the brochure reads: “MoonPies are as much a part of the South as magnolia trees and mint juleps. In fact, many Southerners’ fondest recollections are of Sunday afternoons spent sitting on the front porch eating MoonPies and drinking RC Colas.”
Typical of the time, no written agreement exists memorializing the consent given by the young boy’s parents for use of his likeness in CBI’s marketing materials. Nevertheless, his mother testified at her deposition that she had placed no limitations on her consent. Later, CBI digitally scanned in the photograph to use in other mediums – a commemorative tin, bottleneck ringer, cigar box, book and knit blanket – to market both MoonPie and RC Cola.
In 2011, the plaintiff noticed that the photograph in which he had modeled 34 years earlier was being used in these other mediums. He asserted that CBI and Dr Pepper/Seven Up, Inc. (DPSU), which distributes RC Cola, had no right to use the photograph except in the original brochure. He asserted five claims: violations of his statutory right of publicity, known as the Tennessee Personal Rights Protection Act; the Tennessee Consumer Protection Act; and common law claims for unjust enrichment, accounting and conversion. He argued that the heart of his case arose out of the unauthorized use of his image, but the defendants successfully argued that real dispute arose out of use of the photograph, which in this case was governed by federal copyright law.
CBI and DPSU moved to dismiss for lack of subject matter jurisdiction, asserting that the Copyright Act of 1976 preempted the plaintiff’s claims. Agreeing with the defendants, the trial court concluded that all of the claims asserted by the plaintiff are equivalent to the exclusive rights provided by the Copyright Act, and therefore preempted. Because the plaintiff failed to meet his burden of proving facts that established subject matter jurisdiction, it dismissed the complaint. Agreeing with the defendants and the trial court, the Court of Appeals affirmed dismissal.
The key question on appeal was whether the Copyright Act preempts the plaintiff’s complaint. When faced with a preemption challenge, courts must first determine whether the work in question falls under the broad subject matter of copyright, and then determine whether the rights granted under state law are equivalent to any of the exclusive rights within the scope of federal copyright protection. Here both the trial court and the Court of Appeals agreed with the defendants that both questions should be answered affirmatively.
This case highlights the intersection between the right of publicity and copyright, serving as a reminder that questions of preemption are always decided on a case by case basis. Not all photographs qualify for protection under either copyright law or the right of publicity; sometimes they invoke rights under one body of law, sometimes both and sometimes neither. The legal nuances surrounding copyright and the right of publicity are complicated, rapidly evolving and sometimes overlapping. As courts in Tennessee and around the country continue to grapple with these issues, this decision will contribute to the ongoing dialogue and help shape decisions to come.
Businesses who use celebrities to endorse their products should pay attention to two recent decisions, as should celebrities and other public figures.
In two recent cases, former college football players filed suit against Electronic Arts, Inc., better known as EA, the maker of video game “NCAA Football.” The two primary plaintiffs were Ryan Hart, who played quarterback for Rutgers in the early 2000s, and Samuel Keller, who was QB at Arizona State in the mid 2000s.
Although EA never used the players’ names, it honed in on real-life details of each player, including jersey number, jersey color, type of helmet and facemask, player height and weight, physical appearance, and throwing and interception stats. The players sued on behalf of themselves and other players. The heart of each suit was that EA had violated their right of publicity.
The right of publicity is a creature of state law and, although they have a lot in common, all 50 states treat the right of publicity differently. Typically a plaintiff must show the a defendant used an individual’s name, photograph or likeness to advertise goods or services without the plaintiff’s prior consent. The right typically covers any form of an individual’s likeness or persona. For example, Bette Midler sued when Ford used someone who sounded like her to promote a car in a song, and Vanna White sued Samsung for using a robot dressed in a wig, gown and jewelry to turn letters on a game resembling Wheel of Forture. The right also typically covers any medium, from photographs to films to video games.
In these two most recent cases, EA argued that it had a First Amendment right to use these college players’ likenesses in its video games. The Third Circuit and Ninth Circuit Courts of Appeals acknowledged that a First Amendment right of expression extends to video games but held that the players’ right of publicity trumped EA’s First Amendment right. The courts both employed the “Transformative Use” balancing test and concluded that EA’s video game failed to transform the players’ likenesses. The dissenting judges in both cases disagreed, finding that the video games were highly transformative, given that gamers have the ability to change the avatars’ appearances and to never encounter Hart or Keller if they so choose.
Businesses who utilize the images and personas of public figures and celebrities should always obtain consent prior to using the image. Celebrities often give consent to have their songs recorded and published (a right governed by copyright), but that consent often does not encompass the right of publicity. Celebrities should always check to see to what extent they have consented to having their right of publicity used. The right of publicity continues to be one of the most rapidly changing and evolving areas of intellectual property law.
What do “a murder of crows,” “a gaggle of geese,” “a college of cardinals,” “a pride of lions,” and “a parliament of owls” have in common with a certificate of lineage of walking horses and an airplane repair manual? They are all compilations of facts, and as such they may be (or have been found to be) entitled to copyright protection, unlike the underlying facts themselves.
A few years ago, I was involved in a case in which we established that certificates showing the lineage of horses is protected by copyright. Tennessee Walking Horse Breeders’ and Exhibitors’ Ass’n v. National Walking Horse Ass’n, 528 F. Supp. 2d 772, 777-78 (M.D. Tenn. 2007). Our opponents argued unsuccessfully that these certificates were nothing more than mere facts, and in such, they were similar to information found in a telephone book, and therefore not entitled to copyright protection. (One of the most significant copyright cases from the U.S. Supreme Court in recent decades is Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991), in which the Court held that information found in a telephone book, arranged alphabetically, lacked the requisite originality needed for copyright protection. As Feist explained: “[F]acts are not copyrightable; [but] compilations of facts generally are.”) We showed that although the certificates contained facts, the selection and arrangement of those facts was entitled to copyright protection.
As long as the “selection and arrangement” of facts is original, the work is subject to copyright protection. If copied without permission, a compilation’s author may be able to secure damages and injunctive relief for copyright infringement.
One of my favorite cases protecting the copyright in a compilation is Lipton v. Nature Co., 71 F.3d 464 (2d Cir. 1995). In that case, the author wrote An Exaltation of Larks, which collected “terms of venery,” meaning animals that are hunted. These included terms such as “a pride of lions,” “a rafter of turkeys,” “a gaggle of geese,” “a shrewdness of apes,” “a murder of crows,” and “a parliament of owls.” He later expanded the collection to include human terms, such as “a board of trustees.” Despite arguments that the work was nothing more than facts, the author prevailed in establishing originality in his selection and arrangement of facts, and in establishing copyright infringement.
In a case recently decided by a federal court in Arizona, Honeywell Int’l, Inc. v. Western Support Group, Inc., 2013 WL 1367355 (D. Ariz. 2013), the court found that airplane repair manuals may contain sufficient originality to warrant copyright protection. The defendant there argued that the manuals lack sufficient originality. The court disagreed, and found that a genuine dispute of material fact regarding their originality allowed the case to proceed to trial. On a related not, the court found the photographs at issue (even of utilitarian objects with plain backgrounds) “imply the potential for creativity because they require the photographer to choose from among many possible angles and portions of the object to zoom-in on.”
The bottom line is this: Anyone seeking protection under copyright must demonstrate that the work possesses at least a minimum level of creativity. This is generally easy to do. Although facts are not protected by copyright, “benches of judges” have consistently held that original arrangements and selections of facts into compilations are protected.
Get ready for some great films, Nashville. Running continuously since 1969, this year’s Nashville Film Festival is slated for April 18-25, 2013. This year’s Festival will also celebrate Kurdish Films, presented in part by the Academy of Motion Picture Arts & Sciences.
This is also a great time to consider legal issues in film. For film-makers, these range from obtaining clearance to use music in films to protecting your script and your work through copyright, both pre-publication and after the movie has been shown to the public; from protecting the name of your film and merchandise through trademark to obtaining permission to model characters after actual people (the “right of publicity”); and from drafting contracts to obtain financing to negotiating distribution deals. When these issues aren’t dealt with on the front end, confusion ensues, feelings get hurt, and lawsuits get filed.
For some good free resources, check out the websites of Arts & Business Council of Greater Nashville and FilmNashville. For more tailored advice, talk with your attorney or one who focues on entertainment legal issues.
Today the U.S. Supreme Court issued a decision in Already, LLC v. Nike, Inc. that provides a road map for plaintiffs wanting to abandon a lawsuit they initiated. In many lawsuits, especially those involving intellectual property (IP) or interpretation of a contract, a defendant will seek to gain leverage by filing a counterclaim asking the court to declare the underlying IP (trademark/copyright registration, or patent) unenforceable or invalid, or to declare the underlying contract unenforceable. Sometimes the plaintiff reconsiders the value of pressing forward, and decides to drop its claim, hoping that doing so makes the entire case go away. Defendants aren’t always so agreeable, and some of them, once sued, dig in their heels and press forward in hope of proving the underlying suit was meritless, or in hope of recovering their own costs or fees in defending the suit.
Today’s decision affirmed victory for Nike in a trademark dispute, letting Nike out of the court battle it began. Nike sued Already, LLC, claiming that two of Already’s shoes violated Nike’s Air Force 1 trademark. Already countersued, asking the court to declare that Nike’s underlying trademarks in Air Force 1 were invalid. During the middle of the lawsuit, Nike took the highly unusual step of unilaterally issuing a “Covenant Not to Sue.” (Normally, such covenants are found in settlement agreements, making such covenants bilateral.) In the preamble, Nike stated that “Already’s actions . . . no longer infringe or dilute the NIKE Mark at a level sufficient to warrant the substantial time and expense of continued litigation.” Nike promised not to assert any future trademark or unfair competition claims against Already or any of its distributors or customers. The Covenant was broadly written to also include all current and prior designs, as well as any “colorable imitation” of those designs. And it was unconditional. Nike then moved to dismiss its own claims and Already’s counterclaims, reasoning that its Covenant Not to Sue extinguished the entire case or controversy, rendering it moot. Already disagreed, arguing that its counterclaim was still alive and that the case was not moot.
In a decision by Chief Justice Roberts, the Supreme Court agreed with Nike and held that the case was moot. The Court noted that Nike’s Covenant was broad, and both unconditional and irrevocable. Nike met the burden imposed by the doctrine of the “voluntary cessation doctrine,” and demonstrated that it “could not be reasonably expected” to resume its enforcement efforts against Already. The burden then shifted to Already to demonstrate that it was engaged in or had concrete plans to engage in activities that would arguably infringe Nike’s mark yet to be covered by the Covenant. Already failed to meet this burden, leading the Court to conclude that the challenged conduct could not reasonably be expected to recur.
Cautioning that future plaintiffs might carelessly follow Nike’s example of using a covenant not to sue as the basis for abandoning a lawsuit on grounds of mootness, Justice Kennedy issued a concurring opinion (joined by Justices Thomas, Alito and Sotomayor). “This brief, separate concurrence, is written to underscore that covenants like the one Nike filed here ought not to be taken as an automatic means for the party who first charged a competitor with trademark infringement suddenly to abandon the suit without first incurring the risk of an ensuing adverse adjudication.” He astutely noted that a lawsuit itself (where the trademark holder or plaintiff sues a competitor, then abandons the suit mid-action) “may still cause disruption and costs to the competition.” He warned that courts “should proceed with caution” before ruling that covenants not to sue can be used to terminate litigation, and reiterated that the burden of showing mootness (a) rests with the party asserting it, and (b) is a formidable burden.
One day after Christmas, a federal court handed Sylvester Stallone one of the best gifts he could have asked for. On December 26, 2012, the U.S. District Court for the Southern District of New York granted Stallone’s motion for summary judgment, dismissing writer Marcus Webb’s lawsuit for copyright infringement. (Congrats to my friend Tom Ferber of the New York law firm Pryor Cashman for his successful representation of Stallone.)
Webb, a speech writer by trade, sued Stallone, claiming that Stallone’s screenplay, The Expendables, infringed on his own screenplay, The Cordoba Caper. Both movies are action-packed, set in Latin America, focused on a villain/protagonist named General Garza.
To prove copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Although a plaintiff can establish copyright infringement with direct evidence, it’s hard to do, and most plaintiffs are forced to rely on indirect evidence. Where a plaintiff establishes the defendant had access to his or her original work, the similarity between the two works need only be substantially similar. Where a plaintiff cannot show the defendant had access, the works must be strikingly similar.
Here the court found that Webb could not establish that Stallone had access to his screenplay. Webb is not a professional screenwriter and he has no previous screenwriting credits to his name. Although he sent his script for Cordoba to eight screenwriting competitions, he was unable to connect any dots between his efforts to get his script read and Stallone ever actually seeing his script.
Because Webb couldn’t establish access, he had to prove the two screenplays were strikingly similar if he wanted to save his case. To do so, he would have had to show the two works were “so identical as to preclude any reasonable possibility of independent creation.” After examining both scripts, the court concluded that they could not be said to be “strikingly similar.” Instead, the court found that both movies contained common or “stock” elements (also called “scenes a faire”) that are standard in action movies.
Lesson for copyright plaintiffs: be sure you can connect the dots to establish access if you can’t establish infringement by direct proof and you can’t establish the two works are strikingly similar.
I am a strong believer in our copyright system, and I represent rights-holders every day against infringers. But this is a different animal. While owners of copyrights have every right to enforce and protect their copyrights, the technique the trolls are employing here is a modern twist on the old-fashioned shake down. In my opinion, their methods are questionable at best and close to extortion at worst.
Their methods are similar wherever they go. They obtain IP (Internet protocol) addresses of individuals they suspect have used a “bit-torrent” device to access movie content without paying for it. They then file suit in federal court against multiple “John Does” and attach a list of the IP addresses as an exhibit to the complaint. Next, they file a motion explaining that they need a subpoena to order the ISPs (Internet service providers, such as Charter or Comcast) to reveal the identity of individuals associated with each particular IP address. By law, the ISPs are required to reach out to the John Does and tell them they have 30 days to file a “motion to quash” the subpoena, or otherwise settle the lawsuit. If the individuals take no action, the ISPs will release their identities to the Plaintiff, after which the Plaintiff will amend the complaint to name the individual in the copyright infringement action — for all the world to see.
Some courts have found several problems with the Plaintiffs’ methods in these cases. First, these Plaintiffs are suing IP addresses, not individuals. Second, many of the individuals may not reside in Tennessee — in legal terms, the court has no personal jurisdiction over them. Third, they are attempting to “join” multiple defendants into a single action, when they involve completely different facts. The only thing linking them together is that they allegedly accessed the same movie without permission, but all on different days and times, and all in different places. When faced with copyright trolls in West Virginia, the federal court there dismissed the entire action, forcing those attorneys to pack their bags and find a friendlier location — Washington, D.C.
There are also practical problems with this approach to suing for copyright infringement. I’ll be the first to disagree with people who believe that everything on the Internet should be free. But plenty of the folks who receive these letters from their ISP never actually accessed these movies. Some did, but plenty of them merely neglected to password protect their wireless router, or trusted their teenage children to use the Internet responsibly. Defending one of these lawsuits is time consuming and expensive, so many people choose to settle. Others need to settle to protect their anonymity, either because they work in the entertainment business and their credibility is on the line, or because they’re high profile individuals, or because the movie in question is x-rated and they don’t want their names associated with the title.
Individuals who receive one of these letters from their ISPs should contact a qualified attorney familiar with this area to seek advice and possible representation. Another good option is to read over the subpoena defense resources provided by the EFF (Electronic Frontier Foundation).
For the past three years, WaterCooler has been hosting events that highlight the hidden gems in Nashville, some old and some new. Over the past year, we have tried be more programmatic in our events, tying them to cultural happenings in the city. For us, these are some of the reasons Nashville is a great place to call home.
The most recent example of this was the WaterCooler hosted at Parnassus Books, on August 19.We heard from Serenity Gerbman of Humanities Tennessee, which hosts the Southern Festival of Books, among other programs; Karen Hayes, Co-Owner of Parnassus; and the award-winning novelist, Ann Patchett, who happens to co-own Parnassus Books with Karen.
These speakers gave us insight into all the opportunities to be a reader in Greater Nashville. Parnassus has a program called the First Editions Club, which is like a coffee-of-the-month club, but which delivers signed first editions of books, hand selected by the folks at Parnassus, 10-12 times a year. They’ve also got something called the Founders Rewards Program that, in exchange for showing your support in an independent bookstore, provides fringe benefits ranging from invitations to high-profile artist receptions to personal use of the store after hours – pretty cool place for a date, if you ask me.
Serenity Gerbman, who is Director of Literature and Language Programs at Humanities Tennessee, helps oversee programs including the Southern Festival of Books: A Celebration of the Written Word. It’s scheduled for October 12-14 at Legislative Plaza. This is actually the 24th anniversary of the Southern Festival of Books. It’s completely free and there are no advanced registrations. Just like WaterCooler, if something interests you, show up and it’s first come first serve. Serenity said that they are still looking for volunteers to host the rooms in which the various authors will be speaking and presenting. So, in true WaterCooler fashion, we’re always looking for ways invite people to plug into our community, and this is an easy opportunity.
For me, the most fascinating part of this WaterCooler was hearing the amazing line up of literary talent coming to Nashville in the next few months, including Caroline Kennedy, Molly Ringwald, Patricia Cornwell, Barbara Kingsolver, and Jon Meacham. All of these authors are part of Humanities Tennessee’s Salon@615 program.
Another great option is to attend the Authors in the Round, the fundraising dinner that kicks off the Southern Festival of Books, where diners are paired with well-known authors. If you love schmoozing with writers, and hate dancing and silent auctions, this fundraiser is for you. This year, it will be held on October 12 at the historic War Memorial Auditorium. If you’d like an invitation or for more information, visit their website.
In wrapping up at WaterCooler, Ann Patchett said something that everyone in the audience appreciated. She said that Parnassus’s staff is what sets them apart from online book vendors. She compared Parnassus to an old fashioned hardware store where you bring in your broken parts and the employees tell you exactly what you need. Same thing with Parnassus: walk on in, tell them what you’ve been reading, and they can recommend your next favorite book. But, if you come into Parnassus, take advantage of the recommendations from the staff, and then go home to buy it on Amazon.com for $5.00 cheaper, Ann says you’re “just flat not welcome.” Everyone in the room loved the straight shooting. For a group like WaterCooler, which promotes locally-owned businesses, we couldn’t agree with you more, Ann.
Follow the Southern Festival of Books on Twitter at @SoFestofBooks.
Follow Parnassus Books on Twitter at @ParnassusBooks1.
Follow WaterCooler on Twitter at @WaterCoolerNash.
Follow me on Twitter at @StephenZralek.
Businesses have a lot to gain by using Pinterest, mainly driving traffic to their websites and building brand identity, loyalty, and interaction with customers. To help protect your business from exposure to lawsuits when using Pinterest, consult a qualified intellectual property lawyer who can tailor advice to your unique situation. The above tips are not intended as legal advice.
On January 18, the Supreme Court issued Golan v. Holder, which held that Congress is empowered remove works like the symphony classic Peter and the Wolf from the public domain in the United States, preventing orchestras, musicians and others from using these works unless they get permission and pay a license fee to the copyright holders.
On the same day, the technology community mobilized millions of people to voice their disagreement with SOPA and PIPA, two bills supported by the entertainment industry that were designed to fight online piracy. After blackouts by Wikipedia and protests encouraged by tech giants like Google, by January 19 most members of Congress had withdrawn their support for both bills.
On January 20, the United States arrested Kim Dotcom. He was arrested in Auckland, New Zealand for a file-sharing site called Megaupload.com that was based in Hong Kong. The site allegedly generated over $175 million by illegally copying and distributing music, movies and other copyrighted material without authorization.
What does all of this tell us? Three important things.
First, protection of our country’s intellectual property relies on international cooperation. For us to arrest Mr. Dotcom, who is alleged to have stolen millions from American content creators, we needed the help of authorities in Hong Kong and New Zealand. Which is where Golan v. Holder comes in: no one likes hearing that Peter and the Wolf and other classics have fallen out of the public domain and back into exclusive ownership, but for our country to benefit from international copyright treaties, we also must abide by them. International treaties are what prompted Congress to pull certain works out of the public domain, and what prompted the Supreme Court to reach the conclusion it reached in that lawsuit.
Second, if we didn’t recognize it before the rise and fall of SOPA and PIPA, there’s no denying the tension between content creators and content providers; between the entertainment industry and the technology industry. Our technology is intertwined with our entertainment and our content, so we need these camps to work together. Unfortunately for now, the tension is insurmountable: technology camps want free flow of information while content creators want protection for their original works. Ultimately, these two teams will have to reach a compromise, and Congress cannot ignore the need to protect American intellectual property from online international piracy, like the theft allegedly coordinated by Mr. Dotcom.
Finally, the online protests of SOPA and PIPA mobilized a new segment of concerned citizens. Google claims it gathered over seven million signatures in 24 hours in opposition to the bills. The implications of that statistic are at the same time impressive, intimidating and infinite.