2017 Copyright/Media Law

2017 Copyright/Media Law Year in Review (And selected developments to watch for 2018)Los Angeles Copyright SocietyEntertainment Law & Intellectual Property SectionFebruary 12, 2017

Professor Jay DoughertyLoyola Law SchoolEntertainment & Media Law Institute

1

TOPICSCopyrightRight of PublicityIdea ProtectionTrademarks2

But first…a little funOwner of “Grumpy Cat” (and photos thereof) won $700K+ jury award (1/24/18) in dispute with former licensee3

Copyright TopicsAuthorship/OwnershipSubject MatterRightsInfringement Fair UseDMCA4

Copyright Authorship/OwnershipBernstein v. Apple Corps.Morricone v. Bixeo5

Bernstein v. Apple Corps. (SDNY)Bernstein organized and produced the Beatles’ Shea Stadium concert in 1965. Brian Epstein’s company, Nems Enterprises, had the exclusive right to film/record the show, contracted Ed Sullivan’s co. to shoot the footageThey used the footage for various TV shows, DVD’s etc. Registered for copyright in

Nems’ name.Bernstein sued for dec. judgment re ownership, and for infringementMotion to dismiss granted.

6

Bernstein v. Apple Corps. (SDNY)Copyright ownership claim must be made within 3 yrs. After “a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right.”Subafilms (a Beatles/Apple Corps. Co.) registered copyright in 1988. So latest Bernstein could assert C/R ownership was 3 years later.Loses on that basis, but ct. goes on to consider authorship/ownership claims.B. claimed (1) to be sole, “dominant” author of the footage and (2) to own it as commissioned WFH (“instance and expense”)

B. organized and heavily involved with concert, but not the recording (“fixation”) of the performance. So not an author of the film footage.Same re commissioned WFH—he commissioned the concert but he had no control over filming. Not a WFH author.Nb: focus on who “fixes” the work, not who renders the performance, a la Casa Duse 16

and

Garcia v. Google

.

Claims dismissed, but sanctions denied.

7

Morricone v. Bixeo (SDNY)Morricone is a famous Italian film composer, sued publisher for dec. j. that he can terminate his grants of copyright to them under §203.Italian film score model: composer contracts with publisher, grants all economic rights, publisher enters into agmt. with the film producer, publisher licenses score to film co.

Choice of Law: Per Itar-Tass, court looks to the state with the “most significant relationship”, often the country of origin, to determine applicable substantive law for initial ownership. Morricone is a national of Italy, works first published thereContract formed in Italy between Italian nationalsItalian law applies re whether WFH

8

Morricone v. BixeoNo termination rights in works made for hire.Definition of work for hire under Italian law is main issueBattle of the expertsNo work for hire in Italian law, but they do recognize “commissioned” worksCreated in response to an “order”, assignment of all rights to the requester

Apparently, rights are automatically transferred to hiring party upon creation of commissioned work.This seems very surprising, as Italy is an “authors right” system; seems more likely to be a presumed transfer not an automatic “vesting”. P’s expert agreed works were “commissioned”, but argued not WFH.Ct. persuaded by

publisher’s

expert that this is a “corollary” to U.S. WFH

If so, it’s easier to find a WFH under at least some foreign laws that it is in the US, where the signed

agreement has

to indicate

intention

for WFH

S/J for defendant

.

If appealed, query whether 2d Cir. will focus on the fact that under Italian law there

is

a “transfer”, albeit automatic when commissioned.

9

Copyright Subject MatterStar Athletica v. Varsity Brands (USSC 3/2017): rejected some prior approaches to determine protectable elements of useful articles, adopted one approach (like “temporal displacement”?)Post Athletica:Design Ideas v. Meijer (CD Ill.)Flo & Eddie – Pre-72 Sound Recording Update (Fla.)

Sheridan v. iHeart10

Design Ideas v. Meijer (CD Ill.)Cheap knockoff of P’s sparrow clothespinsOriginally decided pre-AthleticaDesigner judgement approachPhysically separableRe-considered post-Athletica; same resultAthletica (like the old “temporal displacement” test):Separate Identification: Can artistic feature be perceived as a work separate from the useful article?

Independent Existence: artistic element would qualify as PGS work, on its own or fixed in some other medium, if imagined separatelyNb: physical separability and designer judgement are irrelevant

11

Design Ideas v. Meijer (CD Ill.)Sparrow clips qualified.D. claimed the bird shape itself was functional. USSC said design feature has to qualify as a nonfunctional PGS work. Ct. rejected. Once separated from the clothespin, not really useful.Nb: but the clothespin is less useful without the bird shape—is this what Breyer ( Athletica dissent

) was worried about?12

Flo & Eddie, etc.– Pre-72 Sound Recording UpdateCases v. Sirius XM in Cal., NY, and FloridaPartial conditional settlement with Sirius, in Cal., depending on other case outcomes; part of case still on appeal to 9th Cir.NY Ct. App. Found no performance right at common law for pre-1972 U.S. sound recordings

11th Cir. Referred several questions to Florida Supreme Court in 2016.Fla. Supreme Court ruled no public performance right at common law in Fla.; also, distribution under earlier statute would have divested the rightCreating a performance right “would be an inherently legislative task.”Buffer/back-up copies also not infringed; unfair comp. & related claims also failed, since based on the common-law copyright.

13

Flo & Eddie, etc.– Pre-72 Sound Recording UpdateCalifornia Case v. Pandora: Claim under Cal. Civ. Code §980(a)(2)Pandora lost anti-SLAPP motion, appealed to 9th Cir.March, 2017—9th Cir. Certified questions to California Supreme CourtAwaiting decision; may be different, since statutory.ABS v. CBS

(C.D. CA., 2016—holding post-72 remixes not pre-72 recordings)—On appeal to 9th Cir.; argument was in Nov. 2017

14

Pre-72 Sound Recording Update—Other DevelopmentsSheridan v. iHeartMedia (N.D.Ill., 6/2017):Sheridans own many 1950’s and 1960s classic recordings; iHeart

has internet and traditional radio businesses.Distribution of copies of the recordings divested any common-law copyright protectionAlso dismissed various other state law claimsVarious federal legislation proposed in 2017 (all referred to House Judiciary Committee)

“Fair Pay Fair Play” Act would recognize broad performance rights in sound recordings, including pre-1972 US sound recordings

“PROMOTE” Act would recognize terrestrial radio performance rights, but with certain limitations, including if radio paid same royalties as payable by non-subscription digital services; doesn’t cover pre-1972 recordings

“CLASSICS” Act would recognize digital audio transmission rights in pre-1972 recordings

15

Copyright RightsFox v. AereokillerSpanski v. TelewizjaLucasfilm v. VidAngel16

Fox. Aereokiller/FilmOnXFilmOnX is an Aereo copycat internet service which uses mini antenna to capture TV broadcast signals and stream them to FilmOn’s subscribers.

Fox et al. sued FilmOnX in various courts around the country.After SCOTUS found Aereo liable for copyright infringement, the FilmOnX courts did too.In SCOTUS’

s Aereo opinion, it said that Aereo was

“

like

”

a cable system, meaning it transmitted copyrighted content, and therefore needed a public performance license.

FilmOnX took that to heart and raised as one of its defenses that it was entitled to the §111 compulsory license for cable systems to retransmit TV signals.

17

Fox. Aereokiller/FilmOnXSection 111 defines a “cable system

” as:“a facility …that…receives signals transmitted or programs broadcast by one or more television broadcast stations…and makes secondary transmissions of such signals or programs by wire, cables, microwave, or other communications channels.

”

The District Court held that FilmOnX did qualify as a cable system under this definition.The Ninth Circuit reversed:“other communication channels” must be construed narrowly consistent with Copngress

’ intent to cover inherently localized methods of transmission akin to wire or cables.Congress’

intent was to aid the nascent cable industry so that it could provide broadcast content to isolated communities – concerns that do not apply to internet based services.

But because the language is ambiguous, the court looked to the Copyright Office

’

s guidance in interpreting the statute. The Offices

’

long-standing view is that Congress did not intend internet services to be covered by §111.

19

Fox. Aereokiller/FilmOnX

Spanski v. TelewizjaIssue: Whether a foreign streaming site which streams content into the US violates the public performance right under US law.  Plaintiff

Spanski has the exclusive VOD rights in the US for content licensed from Telewizja, the government-controlled Polish TV station (TVP).  

TVP repeatedly breached its agreement with

Spanski

by removing geo-blocking from its own VOD service which allowed the content to be streamed into the US.  

Following repeated actions to recover for the breach, broken promises by TVP to fix the problem, and evidence that

Spanski

had destroyed records to cover up their actions,

Spanski

sued TVP in the DC District Court for copyright infringement (

public

performance) and prevailed, the court finding that TVP was willful.  

20

TVP appealed to the DC Circuit, arguing: (1) it is not directly liable because there was no “volitional conduct”

on its part (i.e., the user, not the VOD service, commits the volitional act triggering the streaming); (2) it is not contributorily liable because the VOD service is capable of substantial non-infringing uses; and (3) there is no infringement under US law because all of TVP's acts took place extraterritorially in Poland.  

21

Spanski v. Telewizja

If accepted by the appellate court, these arguments could be very harmful to copyright owners’ ability to combat pirate streaming sites.  Currently there are no federal appellate opinions on point clearly holding that a public performance from a foreign server to United States computers qualifies as a U.S. infringement, nor is there an appellate decision on whether volitional conduct is an element of a claim for a public performance violation. 

Warner Bros. and other studios filed an amicus brief in support of Spanski, explaining the current rampant piracy by foreign streaming sites.In a surprising and unusual move, the Copyright Office/DOJ also filed an amicus brief supporting Spanski.

22

Spanski v. Telewizja

Disney (et al.) v. VidangelVidAngel offers VOD streaming of all kinds of movies and TV shows to which the consumer applies filters to remove or mute, according to the consumer’s preference, profanity, sexual activity, violence, or other content.

Only $1 a day!Includes the latest releases “

Not yet available on Netflix

”

(or other licensed streaming services)!

You can watch movies that don

’

t even need filtering (like Little Mermaid)!

If you want to watch the whole movie, just apply the

“

credits

”

filter!

All with no licenses from conten

t owners.

What

a deal! 

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1. Family Home Viewing Act“Notwithstanding the provisions of section 106, the following are not infringements of copyright: …

(11) the making imperceptible, by or at the direction of a member of a private household, of limited portions of audio or video content of a motion picture, during a

performance in or transmitted to

that household for private home viewing,

from an authorized copy of the motion picture

, or the creation or provision of a computer program or other technology that enables such making imperceptible and that is designed and marketed to be used, at the direction of a member of a private household, for such making imperceptible,

if no fixed copy of the altered version of the motion picture is created

by such computer program or other technology

.”

…

Vidangel

argues its VOD service is a

“

technology that enables [the consumer to] make[] imperceptible….

”

Plaintiffs argue the FHVA protects only the creation of filters and their use by consumers, but does not exempt the streaming of movies attendant to the use

of

such filters.

Also that the copies on

Vidangel

’

s servers are not

“

authorized copies.

”

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2. Private PerformanceVidangel argues that because consumers “

buy” their movies (for $20 apiece), the streaming to them is not a public performance, but is a private performance.

However,

Vidangel

offers a

“

buy-back

”

program which allows you to sell back your movie to

Vidangel

immediately after viewing for $19 – $1 a day!

Over 99% of

Vidangel

users use the buy-back model.

Plaintiffs argued this amounts to a rental model and in any event the streaming is a public performance.

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3. Fair UseVidangel argued that, given the purposes of the FHVA, its model is a fair use, designed to enable consumers to exercise their “

filtering rights”:transformative because the movies are filtered versions and socially useful

only copying as much as needed for the purpose (the whole movie)

no affect on Plaintiffs

’

market since Plaintiffs

aren

’

t

offering filtered streamed movies

Plaintiff disputes each factor

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CircumventionVidangel argues there is no illegal circumvention of access controls because even though it rips DVDs and copies the movies onto it server in order to stream them, since the consumer “bought” the DVD, the copyright owner is deemed to have consented to the user’s access to the DVD.Vidangel also argues this is a fair use.

27

In California…Judge Birotte agrees with Plaintiffs across the board: Plaintiffs’ preliminary injunction grantedPlaintiffs’ motion for contempt of the p/i grantedNinth Circuit affirmed p/i on appeal

Defendant’s counterclaim for antitrust violations dismissed with prejudiceDismissal currently on appeal

28

Vidangel will not give up:Vidangel came up with a “new service” which applies the filters to a licensed stream.Requires the user to purchase a Vidangel subscription on top of its streaming service subscription.Vidangel still copies the movies onto it servers.

29

From the VidAngel site:How the Technology Works: 1. We have built a crowd sourced tagging tool that allows people throughout the country to tag motion pictures. We have also developed some machine learning algorithms for filtering. Our filtering service is patented, with multiple patents pending. 2. After the content is tagged, users install the

VidAngel app on their iPhone, Android or Roku and provide their Netflix credentials to VidAngel. 3. Then they select a title they would like to filter, choose their filter settings, and click Watch. 4. At that point, our virtual user in the cloud signs into the users' Netflix, Amazon or HBO service, asks for the appropriate title, and directs that it be streamed to

VidAngel's

virtual user.

5

. Finally, we send a filtered version of the title to the user on his or her device.

30

In Utah…Vidangel filed a DJ action against CA Plaintiffs’ affiliates re its new service

CA Plaintiffs moved to dismiss or transferThen Vidangel

filed for bankruptcy

In order to stay the CA action and let the Utah action proceed

CA Plaintiffs moved the bankruptcy court to lift the stay

Bankruptcy court needs CA court to assess the potential damages in order to include the value in the bankruptcy reorganization

The case continues….

31

Copyright Infringement Horizon v. MarvelPenguin v. Colting“Virtually identical” infringement standardFourth Estate v. Wall-Street.com32

Horizon v. MarvelHorizon owns “Radix” comics; created by Ben and Ray Lai, ran for 4 issues.The Lai’s worked at least briefly for MarvelBrought c/r suit claiming infringement of “mechanized body armor” worn by Iron Man in films, and in a poster for “Iron Man 3.” Motion to dismiss.Ct. applies “more discerning” substantial similarity, but also looks to “total concept and feel” (selection/ordering/arrangement of elements).As to the promotional art, although there are differences, their “total concept and feel” is sufficient to survive M/D.

The “fighting pose” (or “getting up after being knocked down” pose) is an unprotectable “scene a faire”As to the armor as it appears in the films, the specific elements alleged to be similar are sufficiently different that no reasonable observer could conclude copied from “Radix”.So the poster claim is still pending, but the films are free to go on!

33

Penguin v. ColtingColtings published a series of “Kinderguides” “colorfully illustrated story summaries” designed to introduce well-known books to children.Plaintiffs own “Breakfast at Tiffany’s”, “The Old Man and the Sea,” “On the Road” and “2001: A Space Odyssey.”

34

Penguin v. ColtingPrefaced by certain informational material, e.g. “about the author”, quotes, etc., followed by a few dozen pages of “Story Summaries”, then “Main Characters,” “Key Words,” “Quiz Questions,” and “Analysis.”The plots, settings, characters mirror the novels, and include many specific details from the novels.Cross motions for S/J.

35

Penguin v. ColtingCourt is skeptical: the Guides “are not even superficially distinct from the respective Novels.” Several interesting arguments made by defendants:The characters, plots and settings are “fictional facts.”This “exercise in sophistry” finds no support in applicable law.Distinguish “discovered facts” (not copyrightable) from “created facts” (original, protected expression).Characters are merely “stock characters”

But sufficiently delineated characters are original, protectable. The details of characters have been copied.The plots are “scenes a faire”“Absurd theory”. General plot ideas aren’t protectable but these books retell in abridged fashion the same stories about the same characters, indicidents, settings and plot twists as the original novels.These are unauthorized derivative works.

36

Penguin v. ColtingFair Use? The defendants “went to great lengths” to achieve fair use, but:These are derivative works, not “transformative” fair usesTacking on a few pages of criticism and commentary “does not provide a safe harbor for an otherwise infringing work.” All fair use factors weight against defendantsAs to effect on market:Defs

. Argue no one would buy these childrens’ guides instead of the originals. But there’s an establilshed market for children’s versions of adult novelsDefs. Argue the plaintiffs haven’t licensed works like these. But plaintiffs might change their minds—this is a market that copyright owners “would in general develop or license others to develop.”

Interests of the public? “Congress did not provide a use-it-or-lose-it mechanism for copyright protection.”

Implicitly arguing that the Copyright Act is unconstitutional—but it withstands constitutional scrutiny: the general scheme has a rational basis.

S/J for plaintiffs granted.

37

Minimal Subject Matter and “Virtual Identity” StandardSophia & Chloe v. Brighton Collectibles (9th Cir.):Reversed jury verdict for plaintiff re simple “Buddha’s Kiss” earrings; “substantial similarity” instruction was wrong, should have used “virtually identical” standard.See also,

Kaseberg v. Conaco (SD CA): dealing with short jokes allegedly copied by Conan writers from a blog/Twitter.E.g.: “The Washington Monument is 10 inches shorter than previously thought. You know the winter has been cold when a monument suffers from shrinkage.”In May, court granted S/J for Conan on two short jokes, but denied S/J as to three others—”thin” copyright, but might be close enough for “virtual identity” infringement

Parties now disputing the C/R Office registration

38

Fourth Estate v. Wall-Street.comCopyright dispute between online news sitesC/R Act requires “registration” as a precondition to infringement suits.Plaintiffs had applied for copyright registration, but hadn’t yet received registration.11th Cir. Affirmed D.Ct. dismissal—actual completed registration required, not just complete application.

Currently a split in the Circuits on this point.Cert. has been applied for—may be granted, to resolved Circuit split.39

Copyright Fair UseDr. Seuss Enterprises v. ComicmixLombardo v. SeussSee also, Viacom suit filed over unauthorized “Teeanage Mutant Ninja Turtles” live show (2/5/18)

40

Dr. Seuss Enterprises v. Comicmix (SD Cal.6-2017)Def. created and ran Kickstarter campaign for “mash-up”, “Oh the Places You’ll Boldly Go.”DSE sued for C/R infringement, TM/Unfair Competition – Motion to dismiss.41

Dr. Seuss Enterprises v. Comicmix (SD Cal.6-2017)Ct. finds D’s work not a parody, but highly transformative; shows favor to “mash-up” culture:“Applying the fair use factors in the manner Plaintiff outlines would almost always preclude a finding of fair use…However, if fair use is not viable in a case such as this, an entire body of highly creative work would be effectively foreclosed….the level of creativity, variance from the original source materials, resulting commentary and intended market will make evaluation particularized…”

But lacking evidence on market harm, denies M/D on C/R claim.

42

Dr. Seuss Enterprises v. Comicmix (SD Cal.6-2017)As to TM: Def. asserts 1st/Amend-Rogers Test and “nominative fair use”Rogers v. Grimaldi: As to use of names in titles and use of names or marks in content, not actionable if:

Some artistic relevance to the defendant’s work, andNot explicitly misleading.D. satisfied the 2 prongs. But 9th Cir. hasn’t yet determined if

Rogers

applies for

“misleading titles that are confusingly similar to other

titles

.” The standard might be only a likelihood of confusion. So won’t dismiss on that basis.

Nominative

F/U

:

Product not readily identifiable without use of mark

Def. didn’t use more of the mark than necessary

No other false suggestion of sponsorship/endorsement

Satisfies the 3 prongs, so TM/

Unf.Comp

. dismissed on that basis.

But DSE hadn’t addressed elements of nominative F/U, only that it shouldn’t be decided on M/D.

Also, D. hadn’t responded to possible confusingly-similar-titles issue on

Rogers

So, leave to amend on TM/unfair competition claims.

43

Dr. Seuss Enterprises v. Comicmix (SD Cal. 12-2017)DSE filed an amended complaint; D’s made M/DOn copyright, only considers fair use factor 4 (effect on markets and potential markets)No presumption of market harm, because transformativeDSE licenses others to publish books derived from its works, and to use its characters in conjunction with other propertiesE.g. “The

Wubbulous World of Dr. Seuss” (muppets)There is a potential market for mash-ups, harmed by this work.So M/D denied on the copyright claim.

44

Dr. Seuss Enterprises v. Comicmix (SD Cal. 12-2017)On the TM/unfair comp. claims:Numerous elements claimed as TM’s. Title is likely to have secondary meaningDr. Seuss’ “Style” of art not likely protectableNominative fair useDef. needs to use the title to reference the Seuss work

Nothing expressly misleading (there was even a disclaimer).But, by using the lettering and stylized font, it used more than necessarySo, M/D on that defense is denied.Basically, all claims survived.Is this a lot for a court to consider on a motion to dismiss?

45

Lombardo v. Seuss (SDNY, 9/2017)Lombardo created “Who’s Holiday!”Uses characters, plot and setting of “How the Grinch Stole Christmas!”One-actress play, featuring a “down-and-out 45 year old version” of Cindy-Lou Who, an adorable 2-year old central character in Grinch.She speaks in rhyming couplets, riddled with obscenities; she drinks booze, abuses pills and smokes “Who Hash”.The character had sex with the Grinch when she turned 18, had a baby, and when he physically abuses him, pushes him off a cliff and goes to jail.

Happy ending: no guests come to her Xmas party, but at the end her daughter rings the doorbell.Very raunchy.After threats from DSE, Lombardo brought declaratory judgement action for fair use; DSE counter-claimed for copyright infringement, TM infringement, dilution.Judgement on the pleadings granted.

46

https://youtu.be/bmHbMrN3Wpw47

Lombardo v. Seuss Ct. find fair use is appropriate by side to side comparison for motion on pleadings-no discovery necessaryApplies the four fair use factors, but once determined to be a parody, highly transformative, most factors de-emphasized.“The Play recontextualizes Grinch’s easily-recognizable plot…subverts the expectations of the Seussian genre and lampoons the Grinch…”\

Distinguishes last year’s “Who’s on First” decisionUse of the Abbot/Costello routine wasn’t necessary to the playCommerciality, nature of work, amount taken, very discounted as to parodyAlthough DSE had authorized derivative uses expanding on Cindy-Lou and aimed at adult audiences, DSE “makes no allegations that it intends to authorize a parody containing references to bestiality, drug use, and other distinctly ‘un-Seussian’ topics…”

As to TM claims, mentions

Rogers

, but basically just “balances” 1

st

A. vs. consumer confusion, finding likelihood of confusion extremely minimal given the parodic nature.

State unfair comp., state and federal dilution claims dismissed for the same reasons, with little discussion.

48

Copyright DMCAPerfect 10 v. GiganewsNB: BMG v. Cox just decided by 4th Cir. 2/1/2018. 49

Perfect 10 v. GiganewsPlaintiff Perfect 10 owns copyrights in tens of thousands of adult photographs; tries to protect its own subscription site.Defendants Giganews and Livewire operate the “Usenet” P2P system, charging subscribers fees to post, store and access content on servers owned and controlled by Defendants, including unauthorized copies of Perfect 10 photographs.

50

P10 sued for violations of the display, reproduction and distribution rights under theories of direct and contributory infringement.On cross motions for SJ, the District Court held in favor of Defendants, concluding that the evidence showed only that Defendants’ actions were akin to passively storing material at the direction of users or automatically copying, storing, and transmitting content upon instigation by users.P10 had raised no triable issue of fact on which Defendants could be held liable.On appeal, the Ninth Circuit affirmed, setting out important standards for direct and contributory liability:

51

Perfect 10 v. Giganews

Perfect 10 v. Giganews

VOLITIONAL CONDUCTThe court held that there is

a volitional conduct requirement to prove direct infringement, and that “volitional conduct” in this context simply means “proximate causation.”

P10 did not adequately allege that

Giganews

engaged in activity that directly caused the display or reproduction of P10’s photographs; the evidence showed only “passive” or “automatic” actions by the system.

Perfect 10 provided no evidence showing

Giganews

exercised control (other than by general operation of a Usenet service); selected any material for upload, download, transmission, or storage; or instigated any copying, storage, or distribution.

52

CONTRIBUTORY INFRINGEMENTThe court addressed only the material contribution prong, holding that P10 failed to establish that

Giganews either materially contributed to or induced infringement by Giganews’ users.

Applying the standard from

P10 v. Amazon

(defendant liable “if it has actual knowledge that specific infringing material is available using its system, and can take simple measures to prevent further damage to copyrighted works, yet continues to provide access to infringing works”), the court held that “there were no simple measures available that

Giganews

failed to take to remove Perfect 10’s works from its servers.

Giganews

presented sufficient evidence that Perfect 10’s proposed method for locating infringing messages was onerous and unreasonably complicated…. “

“Moreover, the record is clear that when

Giganews

did receive machine-readable Message-IDs, it immediately processed them and subsequently removed the messages from its servers.”

53

Perfect 10 v.

Giganews

VICARIOUS INFRINGEMENTAddressing only the

“direct financial benefit”

prong, the court held that the plaintiff must show that the

plaintiff

’

s works

served as a

“

draw

”

to the defendant

’

s service – not merely that infringing copyrighted works in general served as a draw.

“

As the district court noted,

“

[t]his action is a specific lawsuit by a specific plaintiff against a specific defendant about specific copyrighted images; it is not a lawsuit against copyright infringement in general on the Usenet.

”

Any other rule would be in

“

significant tension

”

with Article III

’

s standing requirement, and runs counter to the requirement that there be a causal connection between the injury and the conduct complained of.

54

Perfect 10 v.

Giganews

BMG v. Cox (4th Cir.)BMG sued high-speed internet access service for infringement by customers using P2P (BitTorrent).First case re: §512(a)13 “strike” policy, with rapid reinstatement?

Cox “blacklisted” RightscorpLower Ct.: No safe harbor, because didn’t reasonably implement a “repeat infringer” policy. Jury verdict for BMG, $25M for willful contributory liability. Appealed.Here: Affirms re non-application of safe harbor.“Repeat infringers” isn’t limited to adjudicated infringers. But jury instructions wrong re knowledge necessary for contributory infringement.

Not “knew or should have known” (knowledge or negligence)

Actually knew, reckless, or “willful blindness” of

specific

infringements; adopted an old contributory

patent

infringement case standard.

Consciously avoided knowledge learning of specific infringements, not infringement generally

Remand for new trial.

55

Right of PublicityPorco v. LifetimeDeHavilland v. FX NetworksOthers not covered this evening:Van Zant v. Kyle

Gravano/Lohan v. Take 2Maloney v. T3 Media56

Porco v. LifetimePorco was convicted of murdering his father, attempting to murder his mother. Initially his mother identified him as killer, later recounted. Little to no physical evidence, making “truth” (aside from jury verdict) hard to determine.Lifetime made docudrama, “Romeo Killer: The Christopher Porco Story.”

Porco sued under NY Civ. Rts. Law §§50-51NY’s only privacy/publicity statuteGives right against uses “for purposes of trade”, etc.Initially, the lower court enjoined the showing. Reversed on appeal, and the film was shown on Lifetime.

57

Porco v. LifetimeLower court dismissed claims.2017: App. Div. reversed. Old line of cases (Bins, Spahn) says if a work is knowingly “substantially fictitious”, no longer “newsworthy”, so a speech work can be an actionable use “for purposes of trade.”Terrible rule! All fiction is knowingly false, and most docudramas engage in dramatization. Perhaps if speech is knowingly false but held out as truth, but really right of publicity/appropriation privacy has nothing to do with falsity. If he was defamed, he’d have a claim for damages.

Inconsistent with case law and statutes in other states, e.g. Guglielmi, “Perfect Storm” case.NY Ct. App. Denied review, so back to lower courts.Hopefully, will be appealed and reversed, clarifying the “substantially fictitious” rule.

58

DeHavilland v. FX Networks“Feud: Bette and Joan” – successful FX limited seriesOlivia de Havilland portrayed as secondary character by Catherine Zeta JonesDe Havilland suedinvasion of privacy/false lightCommon law and statutory right of publicityAlleged 4 false scenes:

Fictional interview at 1978 Academy Awards discussing Bette/Joan.Falsely referring to her sister (Joan Fontaine) as her “bitch sister.”Falsely saying that Frank Sinatra must have drunk all the alcohol, because they couldn’t find any.Falsely indicating she turned down a role as a villain in “Hush…Hush, Sweet Charlotte”, saying she doesn’t “play bitches” and the director should call her sister.

59

DeHavilland v. FX NetworksAnti-SLAPP motion deniedFound issue of public interest in a public forumTV docudrama is free speech/public forumTV show about movie stars was a matter of public interestBut, de Havilland shows likelihood of prevailing on meritsFalse light:

FX argued substantively accurate, only slight inaccuraciesWriter/director knew no interview at 1978 Oscars, but dialogue based on other actual interviewsShe’d used the word, “bitch,” but privately, and she had reportedly used the word to the director; but court believed de Havilland’s denialDid spend Oscar night 1963 in Sinatra’s dressing room, but denied comment about Sinatra’s drinking“Defamatory”: viewer may think de Havilland a “gossip who uses vulgar language” about others.

Malice: Although creators sought to be consistent with historical record, knew the specifics were false, or were reckless

60

DeHavilland v. FX NetworksRight of Publicity:Not constitutionally protected speech because:FX received a benefit from using her likeness, “such that it appeared [de Havilland] was endorsing” the showBut: a false endorsement claim should be subject to Rogers test!

P’s experts said it is customary to secure consent and pay (?!)—use depreciates the value of her name and identityNot Transformative becauseCreators wanted to the make the appearance as real as possible (?!) and per P’s expert, worth $1 – 2M (showing “economic appeal” is from P., not other elements of show?).Seems to miss the point of Saderup.

Def. had “actual malice.”

But

knowledge of falsity/recklessness should be irrelevant to a right of publicity claim—relevant to defamation, false light.

61

DeHavilland v. FX NetworksFairly shocking outcome—this type of use shouldn’t violate right of publicity, almost ignores prior 1st Amendment cases (e.g Guglielmi, Sarver), misinterprets “transformativeness.” Will seriously chill future

speech/docudramas, if not overturned.False light may be closer, but hard to see how alleged false statements would cause meaningful damage to a reasonable person.On appeal. 62

Idea ProtectionJordan-Benel v. Universal (9th Cir., June 2017)(idea theft not SLAPP “speech”!)Reed v. NFLAlexander v. MGM (“Creed”)63

Jordan-Benel v. UniversalP. wrote spec script, “Settler’s Day.”Submitted to UTA. UTA sent to Delmonico. Passed.Delmonico/Lemercier (also UTA client) wrote “The Purge.”P. brought copyright infringement/imp. in fact contract idea theft claim, claim for credit. Production defendants brought anti-SLAPP motion. D.Ct

. denied. Affirmed here.For anti-SLAPP, claim must arise from an act in furtherance of rights of free speech (or petition).D’s argued claim arose from production, distribution, content, which was the “but for” cause of the payment obligation.From what conduct does the claim arise—”specific act of wrongdoing challenged by plaintiff”? Ct. said failure to pay, not exploitation of film.

64

Jordan-Benel v. UniversalElements of “Desny

” implied-in-fact contract claim:SubmissionSubject to conditions (usually payment)

Defendants know/should know conditions

Defendants accept submission

Defendants actually use submission

The submission had value.

Ct. focused on failure to pay, rather than actual use. Failure to pay is not “in furtherance of free speech”

Mainly policy argument: looking at “but for” cause “would lead to an unprincipled expansion of anti-SLAPP” (

newswriter

, recording artists hypos).

65

Jordan-Benel v. UniversalGreat case for plaintiffs! But arguable: “actual use” is a required element of the claim, no obligation to pay without it. Purpose of anti-SLAPP is to deter lawsuits brought to chill valid exercise of speech Film is clearly free speech and these claims can chill that. Since anti-SLAPP is a state statute, possible that Califoria Sup. Ct. could reach a different

result? For now, settled in 9th Cir.What about cases asserting that plaintiff agreed not to use the submission (cf. Montz)? Careful plaintiffs will avoid framing claim like that.

66

Alexander v. MGMP. wrote screenplay, made “pitch reel” about Rocky training son of Creed, from “Rocky IV”.Interesting points: P. “submitted” idea by Tweets to the “Rock” Johnson, followed by Stallone, and Carl Weathers; also posted on Vimeo, then his websiteAlso submitted script to people who knew S/W of “Creed”D’s made “Creed”, similar ideaCatch phrase: “Your legacy is more than a name”

P. sued in N.J.: misappropriation of idea, implied-in-fact contract, unjust enrichmentM/D, transferred to C.D. Cal.67

Alexander v. MGM

68

Alexander v. MGMChoice of law (like Sarver): Fed. Ct. applies COL rules of transferring court (N.J.). N.J. “government interests” approach leads to application of Calif. substantive law, mainly because defendants are here (and “conduct” occurred here).Misappropriation under California law—almost entirely preempted (NJ recognizes re confidential ideas). Only “legally protected property rights”. Ideas are not property, especially where made widely available so no confidentiality. Dismissed.

Desny claim:P. invited the court to premise breach of implied contract on a Tweet that wasn’t responded to and wide dissemination on the internet.Ct.: that would “turn mere idea submission into a free-for-all.”Stallone, et al, didn’t “accept” the submission. This is a 21st Century version of “blurting out”.

Unjust Enrichment? Generally not applicable for ideas under Calif. Law. Same flaws as K breach claim

. Also preempted by C/R law.

69

Reed v. NFLReed created outline for an American Idol type show, set in football world.Left voicemail; alleged Defendants sent him an email requesting he submit. He then emailed an outline.

A few days later, NFL sent email that they don’t accept unsolicited submissions, that the emails weren’t read and had been deleted, that the idea was rejected.A year later, Def’s produced “Undrafted”, a similar show.Reed sued for breach of imp-in-fact contract, breach of confidence, Cal. Unfair competition.

70

Reed v. NFL—Another 21st Century “Blurting Out” CaseImplied-in-fact contract:Claimed it was standard industry practice to keep submissions confidential and to pay for them if used.But didn’t allege that he clearly conditioned his offer to submit upon obligation to pay.No allegation that Def’s took steps to evaluate the proposal or acted in conformance with supposed industry practice. Dismissed.

Breach of confidence:Need to show info was disclosed in confidence.His allegations suggest the opposite—he contacted other N/W’s, sent 8 emails to NGL employees.So, no demonstration that he conveyed info on the condition of confidentiality. DismissedUnfair Competition? No “unlawful” conduct, since no K or confidentiality. No allegations to show conduct “unfair” or “fraudulent”.

All dismissed with prejudice.

March 20, 2017: 9

th

Cir. Affirmed.

71

Cases to Watch in 2018Reardon v. Disney (ownership of CGI/motion capture)Kaseberg v. ConacoViacom/Ninja Turtles Law Suit (may be moot or settled as of 2/6/18?)Fourth Estate v. Wall-Street.comNoval Williams Films v. Estate of Michael Jackson (“Michael Jackson: The Last Photo Shoots” dec.

judgment)Others above…72

Special Thanks to:Dale NelsonVice President and Senior Intellectual Property CounselWarner Bros. 73

Sid Bernstein Presents LLC v Apple Corps Ltd et al, No. 16-07084 (S.D.N.Y. July 26, 2017) Ennio Morricone Music Inc. v. Bixio Music Grp. Ltd., No. 16-CV-8475 (S.D.N.Y. Oct. 6, 2017)

Design Ideas, Ltd. v. Meijer, Inc., No. 15-CV-03093, 2017 WL 2662473, at *1 (C.D. Ill. June 20, 2017)Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 229 So. 3d 305 (Fla. 2017)

Sheridan et al v.

iHeartMedia

, Inc.

, No. 15-cv-9229 (N.D. Ill. June 5, 2017)

Fox Television Stations,

Inc

v.

Aereokiller

, LLC

, 851 F.3d 1002 (9th Cir. 2017)

Spanski

Enterprises, Inc. v.

Telewizja

Polska

S.A.

, No. 12-CV-957 (D.D.C. Sept. 30, 2017

)

74

Citations

CitationsDisney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848 (9th Cir. 2017)Horizon Comics Prods., Inc. v. Marvel Entm't, LLC, 246 F. Supp. 3d 937 (S.D.N.Y. 2017)

Penguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)Sophia & Chloe, Inc. v. Brighton Collectibles, LLC, 708 F.

App'x

460, 461 (9th Cir. 2018

)

Fourth Estate Pub. Benefit Corp. v. Wall-

Street.com

, LLC

, 856 F.3d 1338, 1341 (11th Cir. 2017

)

Lombardo v. Dr. Seuss Enterprises, L.P

., No. 16 CIV. 9974 (S.D.N.Y. Sept. 15, 2017)

Dr. Seuss Enterprises, L.P. v.

ComicMix

LLC

, 256 F. Supp. 3d 1099 (S.D. Cal. 2017)

Perfect 10, Inc. v.

Giganews

, Inc.

, 847 F.3d 657 (9th Cir.), cert. denied, 138 S. Ct. 504 (2017

)

75

BMG Rights Mgmt. (US) LLC v. Cox Commc'ns, Inc., No. 16-1972, 2018 WL 650316, at *1 (4th Cir. Feb. 1, 2018)Porco v. Lifetime Entm't Servs., LLC

, 147 A.D.3d 1253, (N.Y. App. Div. 2017)Ronnie Van Zant, Inc. v. Pyle, 270 F. Supp. 3d 656 (S.D.N.Y. 2017)Olivia de Havilland v. FX Networks, Los Angeles Superior Court, No. BC667011 (Sept. 29, 2017)

Lohan

v. Take-Two Interactive Software, Inc.

, 28 N.Y.3d 915, 74 N.E.3d 678 (2017)

Maloney

v. T3Media, Inc.

, 853 F.3d 1004 (9th Cir. 2017)

Jordan-

Benel

v. Universal City Studios, Inc.

, 859 F.3d 1184 (9th Cir. 2017)

Reed v. Nat'l Football League

, 683 F.

App'x

619, 620 (9th Cir. 2017)

Alexander v. Metro-Goldwyn-Mayer Studios Inc.

, No. CV 17-3123-RSWL-KSX (C.D. Cal. Aug. 14, 2017

)

76

Citations

Twentieth Century Fox Television a division of Twentieth Century Fox Film Corp. v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017)Lions Gate Entm't, Inc. v. TD Ameritrade Servs. Co., No. 2:15-05024 (C.D. Cal. Oct. 16, 2017)

Matal v. Tam, 137 S. Ct. 1744, (2017)Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017), cert. denied, 138 S. Ct. 362 (2017)

De La Huerta v. Lions Gate

Entm't

Corp.

, No. B271844 (Cal. Ct. App. Oct. 18, 2017),

review filed

(Nov. 27, 2017)

Rearden

LLC

v.

Disney, No. 3:17-04004 (N.D. Cal. Sept. 15, 2017)

Kaseberg

v.

Conaco

, LLC

, 260 F. Supp. 3d 1229 (S.D. Cal. 2017)

77

Citations