The Anchor Plate

A Parody of a Parody?

Geoff Gerber — Mon, 07 May 2012 15:09:42 -0600

I grew up watching Doctor Who. Now I watch the latest incarnation with my youngest son. My middle son is not a huge Doctor Who fan, but he likes Community on NBC. So, I was amused to see Community introduce a creation strikingly similar -- smoe might say substantially similar -- to Doctor Who, called Inspector Spacetime, into the Community storyline. (In an interesting aside, three episodes of Doctor Who have been nominated for the Hugo Award for Best Dramatic Presentation, Short Form and one episode of Community has been nominated in the same category.)

Apparently the actor who plays Inspector Spacetime on Community, Travis Richey, pitched the idea of a spin-off of sorts to NBC/Sony. They did not bite. Believing he was working with a parody, the actor decided to extend the role independently by launching a Kickstarter project for an Internet show of Inspector Spacetime. NBC/Sony, claiming ownership of Inspector Spacetime, said no.

Now the actor is proceeding with a slightly altered version. Listen to the discussion on Law of the Geek, episode LotG 015: Who's on First?

A Poolside Lesson: Do You Live to Work or Work to Live?

Michael A. Kahn — Mon, 23 Apr 2012 16:12:18 -0600

This week's special edition of Missouri Lawyers Weekly features my essay about a profound life lesson I learned as a young attorney in Chicago. The poignant experience has stayed with me all these decades later. I hope it will affect you the same way.

Zombies, Fair Use and Public Domain

Michael A. Kahn — Fri, 10 Feb 2012 16:26:27 -0600

The bane of a copyright lawyer is to see an issue where normal people just see a good read. Case in point: Death Comes to Pemberley, the latest murder mystery by the great P.D. James, and the latest in a series of "sequels" or knockoffs of Jane Austen's Pride and Prejudice. The hands-down winner for the best knockoff title is, of course, Pride and Prejudice and Zombies, which begins with a twist on one of the most famous opening lines in literature: "It is a truth universally acknowledged that a zombie in possession of brains must be in need of more brains."

If copyright still protected Jane Austen's original novel, she would have decent copyright infringement claims against Ms. James and Zombie author Seth Grahame-Smith. The same might not be true for some of literature's greatest knockoffs.

For example, John Gardner's Grendel is a poignant retelling of the Beowulf epic, narrated from the perspective of the monster. That retelling unquestionably makes a "fair use" of the original. So, too, does Wide Sargasso Sea by Jean Rhys, a "prequel" to Charlotte Bronte's Jane Eyre. The prequel is the haunting story of Antoinette Cosway, the Jamaican first wife of Jane's love, Edward Rochester--the mysterious mad woman in the attic who eventually burns down the mansion and jumps to her death from the flaming roof. The Rhys novel is the epitome of a "transformative use" under copyright law.

Not that it matters. Knockoffs, sequels, prequels and spoofs of works in the public domain make the publishers' lawyers sigh in relief over not having to wade into the swampland of the modern "fair use" doctrine.

Sadly, though, the one lesson for publishers from the past few decades of litigation is that you proceed at your peril if you publish a literary work that purports to build upon, poke fun at, or re-imagine a prior work that is still protected by copyright. Even though the world of fan fiction thrives on the Internet and is usually tolerated and occasionally encouraged by the copyright holders (often of science fiction movies and TV shows), publication of actual books tends to incite lawsuits.

One recent example is the novel 60 Years Later published under the pen name John David California. The novel is inspired by the plot and characters of J.D. Salinger’s famous novel The Catcher in the Rye. It opens 60 years after publication of the Salinger novel and features a fictional confrontation between a 76-year-old Holden Caulfield and the 90-year-old Salinger. The story of the ensuing copyright infringement lawsuit, injunction, and subsequent settlement is excellently told in a post at the Copyright and Trademark Blog.

Among the predecessors to that litigation are:

Gone With The Wind versus The Wind Done Gone, in which Alice Randall's retelling of the Margaret Mitchel novel from the perspective of the slaves was ultimately deemed a "fair use" in a decision by the 11th Circuit Court of Appeals ; and
The Cat in the Hat versusThe Cat NOT In the Hat, where the 9th Circuit affirmed the preliminary injunction halting publication of a picture book retelling of the O.J. Simpson trial using familiar images and rhyme patterns from the Seuss books.

Unfortunately, the opinions in those three cases have not eliminated the fuzziness of the "fair use" doctrine in the literary realm. Re-read each court's explanation for why the particular work at issue either qualifies or fails to qualify as a "fair use," and then apply that explanation to the work at issue in the other two cases and see if the explanation can't "justify" the opposite resolution of the "fair use" facts at issue in that case.

We--and by "we," I include authors, publishers and their attorneys--could use some clarity. Until then, the "fair use" doctrine will continue to have the "chilling effect" in the publishing world that the Supreme Court has tried to minimize in the other legal swamplands of free expression,

The "Headline Trial" In Literature

Michael A. Kahn — Thu, 12 Jan 2012 17:34:26 -0600

I was in college when the rock band Dr. Hook and the Medicine Show released a hit song about a fantasy many of us shared--a fantasy neatly captured in the song's title: "On the Cover of the Rolling Stone." For the band, it actually came true later that year. For me, alas, not yet.

However, if some band should ever write a song with the catchy title,"On the Cover of the St. Louis University Law Journal," I'd qualify. Sort of. My name is there on the cover of Volume 55, along with 8 others who wrote articles for that issue, all of us on some aspect of the topic of "the headline trial." Mine focused on the headline trial in great literature, from Shakespeare's Shylock to Melville's Billy Budd.

Thanks to St. Louis University School of Law for allowing me to share the article with those of you who might be interested. Here it is.

Fair Use, Rasta Style

Michael A. Kahn — Mon, 02 Jan 2012 13:15:02 -0600

To your left is Exhibit A in Cariou v. Prince, one of the most significant and troubling copyright "fair use" cases in recent years. The plaintiff, Patrick Cariou, is a professional photographer who published a book of his Jamaican works entitled YES, RASTA. The book includes striking portraits of Rastafarians he met during his years in Jamaica. The main defendant is Richard Prince, a well-known "appropriation artist."

Exhibit A is entitled "Inquisition." It is one of 29 works in Prince's Canal Zone series, 28 of which include photographs from Cariou's book that Prince copied, arranged in collages, and added tints or paints. Cariou sued for copyright infringement, and Prince defended on "fair use" grounds. Earlier this year U.S. District Judge Deborah Batts entered judgment in Cariou's favor, rejecting Prince's defense in a carefully reasoned opinion. To put it mildly, the world of art law sat up and took notice.

Judge Batts' opinion has generated much discussion in the blogosphere. Some, including my friend and former colleague Coco Soodek, came down on Cariou's side in her Art Law blog post. Others, including artist Jody Garnett, passionately defended Prince in her blog post. Indeed, the ongoing legal battle, which is now before the Second Circuit Court of Appeals, has generated sufficient interest to merit a recent lengthy piece in the New York Times.

As we await the appellate decision, two related aspects of this case intrigue me:

1, The dilemma of the inarticulate artist. The "fair use" defense--and the "transformative use" requirement at the heart of that defense--mandate that the allegedly infringing work somehow comment upon the original. As Justice Souter explained in the Supreme Court's key "fair use" decision in Campbell v. Acuff Rose Music, Inc., if the new work "has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger."

But the problem here is that the artist, when asked at his deposition, was unable to articulate any transformative purpose behind his use of exact copies of the Cariou's photos in his collage. Indeed, the Court's quotations from Prince's testimony are painful to read for any proponent of "fair use." Thus the Court of Appeals must confront the evidentiary issue of whether the existence of a "transformative use" depends upon the artist's ability to articulate it--and that brings me to the second intriguing aspect of the case:

2. Judges As Art Critics. While many have been quick to label Prince "lazy" and "a thief," the genre at issue--"appropriation art"--has an impressive pedigree dating back to at least Pablo Picasso's Bottle of Vieux Marc, Glass, Guitar and Newspaper, a 1913 work of collage art that includes actual newspaper clippings. Andy Warhol's appropriation artwork includes his Cambell Soup Can and his Marilyn, the former a virtual copy of the soup can and the latter a silkscreen of an existing photograph of Marilyn Monroe. Even more challenging is artist Sherrie Levine's After Walker Evans 4, one of an acclaimed set of--are you ready?--her photographs of reproductions of Depression-era photographs by Walker Evans. Not a collage; just a photograph of a photograph that had been reproduced in a book of photographs by Walker Evans. It now hangs in the Metropolitan Museum of Art in New York City, as does After Walker Evans 2.

Thus the Court of Appeals will confront Justice Oliver Wendel Holmes' warning, expressed in a copyright case from more than a century ago:

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge

Bleistein v. Donaldson Lithographing Co., 188 US 239 (U.S. 1903). Stay tuned.

Facebook Faceoff: What Makes a "Like" a Lawsuit?

Michael A. Kahn — Wed, 28 Dec 2011 15:13:37 -0600

In January of 2011, Facebook launched its "Sponsored Stories" ad program. As Ad Age magazine explained back then: if Starbucks, for example, buys a Sponsored Story ad, then the next time you check in or "like" a Starbucks, your updated status will run twice for all your Facebook friends: once in your news feed and again as a paid ad for Starbucks. That second time will be on the right side of each of your friends' news feeds, complete with your name and photo, and marked with the words 'Sponsored Story.' (The image on the right is the example from the Ad Age story.)

In other words, you will have become an unpaid spokesperson in a Starbucks ad. And you will have also become a potential plaintiff in Fraley, et al. v. Facebook, Inc. one of the most fascinating right-of-publicity class actions in America.

Earlier this month, U.S. District Judge Lucy Koh issued an important ruling in the Fraley case denying Facebook's motion to dismiss the right-of-publicity claims. Although the case is still young, Judge Koh's opinion is an excellent example of the challenge courts face in pouring old wine into new bottles. Here, the challenge is applying hoary principles of privacy law in the social media context, namely, to California's right of publicity statute, which provides that:

"Any person who knowingly uses another's name, . . . photograph, or likeness, in any manner . . . for purposes of advertising . . . goods or services, without such person's prior consent . . .shall be liable for any damages sustained by the person or persons injured as a result thereof"

Facebook sought dismissal of the right-of-publicity claim on 3 grounds: (1) Facebook members are "public figures" to their friends and thus their status updates fall within the 1st Amendment defense of "newsworthiness"; (2) Facebook members "consented" to this use of their identities when they accepted the Terms of Use, and (3) since the class members are are not "celebrities," they have suffered no economic injury because use of their identities has no commercial value.

Judge Koh rejected the "newsworthiness" defense. Citing to the Ninth Circuit's decision in Abdul-Jabbar v. GMC, she explained that even if the Facebook posters were "public figures" to their Facebook "friends," the First Amendment did not apply because Facebook has used their identities in the Sponsored Stories for purely commercial purposes. As for whether clicking on the "Accept" button for Terms of Use constituted consent to this use, the Judge found disputed questions of fact that could not be resolved on a motion to dismiss.

As for whether there was commercial value in the class members' identities, the Judge allowed Facebook's founder to explode that defense through his own words from a promotional pitch for Sponsored Stories:

Plaintiffs quote Facebook CEO Mark Zuckerberg stating that "[n]othing influences people more than a recommendation from a trusted friend. A trusted referral influences people more than the best broadcast message. A trusted referral is the Holy Grail of advertising."

Talk about a social media version Shakespeare's "hoist on his own petard." Stay tuned. The case is young.

Can't Wait for the SOPA Debate in the House?

Geoff Gerber — Mon, 05 Dec 2011 21:22:12 -0600

The House of Representatives is scheduled to debate SOPA (the "Stop Online Piracy Act") later this month. There has been a great deal of debate already about the potential impact of SOPA and its counterpart, the PROTECT IP Act ("Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act"), in the Senate. Stephen Colbert moderated a superficial, but entertaining debate on one of his episodes. The Hollywood Reporter is following the debate and analyzed some of the copyright secondary liability cases that might be used to argue for SOPA-like remedies even if SOPA does not pass.

SOPA, its myths and reality, are discussed on Law of the Geek Episode 4: "Shiver Me Timbers! A SOPA Discussion."

The Rally Squirrel and the 500-lb. Gorilla

Michael A. Kahn — Sat, 05 Nov 2011 12:09:01 -0600

By the time the St. Louis Cardinals reached the World Series, the little gray squirrel that had dashed across home plate during Skip Schumaker's at-bat early in the playoffs had been transformed into The Rally Squirrel, complete with Rally Squirrel towels, Rally Squirrel t-shirts and Rally Squirrel stuffed animals.

And by the time Alan Craig caught the final out in the 9th inning of Game 7, the first application to register RALLY SQUIRREL was on file with the U.S. Trademark Office, to be followed ten days later with an application to register RALLY SQUIRRELS. Both were filed by businesses unaffiliated with Major League Baseball. And both raise the same question: should a company be able to claim trademark rights in a name that originated in the public domain?

The border between property rights and the public domain has been uniquely permeable for trademarks. Some coined words that were once valuable trademarks have eroded into generic terms, including aspirin, heroin, thermos, escalator, dry ice and zipper. Other trademarks struggle to avoid genericide, including Coke, Kleenex and Xerox. And yet others, to the dismay of their owners, have spawned evil twins that have entered the public domain with distinctly unflattering meanings, e.g., "Mickey Mouse operations," "Band-Aid solutions," and "Barbie girls."

But Rally Squirrel is an example of the reverse, namely, a term that might just cross the border from public domain to private property. It has happened before in sports--at least twice.

DREAM TEAM: Back in 1991, the US Olympics Committee announced that the USA basketball team for the 1992 would be comprised of professional basketball players. This was big news, since only amateurs had played on previous teams. The February 18, 1991 Sport Illustrated cover featured a photograph of Magic Johnson, Michael Jordan, Charles Barkley, Patrick Ewing and Karl Malone wearing their Olympic uniforms under the heading DREAM TEAM. The name went viral, and soon everyone was referring to them as "the Dream Team." But by June of that year, NBA Properties had filed an application to register the name as its trademark. That application triggered a lengthy process that took a full decade before the US Trademark Office granted the application. Along the way, there was a trademark infringement lawsuit in St. Louis in which I represented NBA Properties.

THREE-PEAT. This clever phrase became popular in Los Angeles in 1988 when Lakers fans began hoping that their team, which had already won two consecutive NBA titles, would win a third in a row. Lakers coach Pat Riley, through his company, filed an application to register THREE-PEAT. Though he secured the registration, his Lakers failed to secure that third title. Ironically, the Chicago Bulls went on to win three in a row, and Pat Riley's company was able to collect royalties from all of the apparel and memorabilia manufacturers who used that phrase on their products.

As for RALLY SQUIRREL, we'll have to wait and see what happens with the applications. But the drama should become particularly interesting if and when the 500-pound gorilla known as MLB Properties decides to enter stage left.

From Blogging to Podcasting -- Natural Progression?

Geoff Gerber — Thu, 03 Nov 2011 11:32:51 -0600

I've started podcasting.

I've thought about doing this ever since a commenter on the blog found us after listening to a podcast on which I was a guest. The hospitable crew over at The Podgecast had let me guest ramble about IP law related to comics, movies, role-playing games, and pretty much any thing else. We even talked bout this blog and alternative ways to approach IP litigation.

I thought it would be a good idea to dig up some good resources for IP law podcasts and post them here.

Unfortunately, it was harder than I thought. There are a number of great IP law blogs. We reference a bunch in our sidebar. There are a few that focus on IP. Such as Peter Lando's IP Counsel or the Intellectual Property Colloquium (one of my favorites) that is associated with UCLA School of Law.

But there are many more good podcasts that talk about the law generally and sometimes about IP law. Robert Ambrogi who follows legal blogs and who writes about media law, notes a number of good legal podcasts and cohosts one himself.

Often, the podcasts that cover technology and the law are the best at covering IP. Denise Howell's This Week in Law is a great example. Another might be The Kennedy-Mighell Report (particularly as it relates to social media).

Still, one of my favorites is Entertainment Law Update with Gordan P. Firemark, Esq., the author of The Podcast, Blog and New Media Producer’s Legal Survival Guide.

I was encouraged by all of these efforts and thought, "How hard could it be?" i was also encouraged by a friend and former colleague, Melina Pinilla, who shares similar interests in legal issues and, more importantly, was willing to learn to edit a podcast.

I enjoy talking about legal issues related to the comics, games, movies, and books I like with folks who are also interested in them. A while back I was interviewed at Archon between presentations on character copyight and trademark, copyright and right of publicity in pop culture by The Backseat Producers. We discussed all of those issues in what is normally a podcast about movies. I've also spoken with Aron and Paulie about comic book litigation on Funny Books with Aron and Paulie at Ideology of Madness. Most recently, The Podgecast had me back and let me participate with an interview of Cam Banks who is the lead project manager for Margaret Weis Productions development of the licensed Marvel Heroes roleplaying game.

So, . . .

Melina and I have started a podcast called Law of the Geek, in which we discuss how legal issues shape geek culture and how geek culture shapes legal issues. If it sounds interesting, check out LotG Episode 1: Copyr-ight of the Living Dead in which, for Halloween, we discuss zombie copyright issues.

Who Gives Who the Finger?

Michael A. Kahn — Wed, 26 Oct 2011 14:14:54 -0600

Okay, copyright fans, time to unpack our lamest finger cliches. Earlier this month down in San Antonio federal court, #1 Fan Company and Spirit Industries commenced the ultimate case of finger-pointing in their copyright infringement complaint in #1 Fan Company et al. v Pangea Direct. The creation at the center of the lawsuit is that over-sized foam hand with upraised forefinger familiar to sports fans everywhere.

The issue, at least as framed in the complaint, is whether Pangea's version of the foam hand (shown to the right) infringes the plaintiff's prior version (shown to the left).Ah, but keep your fingers crossed.The more intriguing issue is lurking just behind those fingers, and it will likely turn into a copyright dispute that is, well, finger-lickin' good.

It's important to point out what this case is not. It is not a patent case, where the plaintiff claims to have invented the over-sized foam hand. Nor is it a trademark case, where the plaintiff claims that consumers are likely to be confused as to the source, sponsorship or affiliation of the competing foam hands.

No, this is a copyright case, and under Section 102 of the Copyright Act, 17 U.S.C.§ 102, copyright protection for a work does not extend to any idea or concept embodied in that work. Up until this lawsuit, my favorite idea-vs-expression case involved a very different type of forefinger. In JCW Investments v. Novelty, the Seventh Circuit, trying to keep a straight face, struggled to define what portion of the farting doll known as Pull My Finger Fred (shown to the right) constituted protected expression and what portion constituted an unprotectable idea. (Read the witty opening paragraph of that decision.)

Here, however, the idea-vs-expression issue seems a bit more straightforward. The unprotectable idea would seem to be: an over-sized foam hand with an upraised forefinger. The rest is, or at least could be, protectable expression.

The other related issue is the "useful article" distinction. Useful articles under copyright law are objects that have an intrinsic utilitarian function that is not merely to portray the appearance of the article, such as an automobile body clothing, furniture, and dinnerware. Copyright does not protect the utilitarian aspects of such works; however, it may protect any pictorial, graphic or sculptural authorship that can be identified separately from the utilitarian aspects. For example, as the Copyright Office explains, "a carving on the back of a chair or a floral relief design on silver flatware can be protected by copyright, but the design of the chair or the flatware itself cannot, even though it may be aesthetically pleasing."

Is the foam hand at issue a "useful article"? If so, are there expressive elements that can be identified separately from the utilitarian aspects? And did the defendant copy any of those elements? While it's too earlyto put our finger on the key issue in the case, we can at least give a thumbs up to the lawyers at Gunn, Lee & Cave, P.C., who did a nice job drafting the complaint.

Topps Strikes Blow for First Amendment

Michael A. Kahn — Mon, 10 Oct 2011 10:40:43 -0600

One of my favorite clients has just won a courtroom battle with ramifications far beyond the trading cards at issue in the lawsuit. Indeed, its victory is literally historical, since the case addresses the issue of who owns great moments in history: the participants or the public?

Here, that great moment in history took place on July 21, 1969. That's when astronauts Neil Armstrong and Edwin "Buzz" Aldrin, Jr. climbed down from their Apollo 11 lunar module and became the first humans to walk on the Moon.

Armstrong captured that moment with his camera, pointing it toward Aldrin and snapping what has since become the most famous space-related photograph of all time, the iconic Visor Shot. This year, however, that same image was the focus of Aldrin v. The Topps Company, Inc.., Case No, CV 10-09939 (C.D. Cal. 9/27/2011)., where the issue was whether Buzz Aldrin's right of publicity trumped Topps' right to portray his historical moment on a trading card.

Two years ago, Topps released one of its American Heritage trading card sets, the "American Heroes Edition." Among the hundreds of trading cards featuring American heroes of all walks of life was a group of 28 Heroes of Spaceflight, including Buzz Aldrin. There was also a Gemini XII card that listed the mission dates and crew (which included Aldrin). On the back of that card was a description of the mission that, among other things, featured "astronaut Buzz Aldrin's smooth, multi-tasking 140-minute space walk."

Finally, and from Aldrin's perspective, most damningly, the series was packaged in a box that bore three images: Abraham Lincoln (captioned "Abraham Lincoln") , Mickey Mantle (captioned "Mickey Mantle"), and the Visor Shot (captioned "Moon Landing Apollo 11"). Although the astronaut is not identified in the caption, if you examine the spacesuit closely you can make out the name "E. Aldrin."

Aldrin sued Topps for violating his right of publicity, unfair competition, and unjust enrichment. Topps responded by filing a motion to dismiss under California's anti-SLAPP (Strategic Lawsuits Against Public Participation) statute, which allows the court to dismiss a lawsuit at the outset if it determines that the actions challenged in the lawsuit--here, using the Visor Shot and Aldrin's name in its American Heroes Edition--are actions arising from the defendant's right of free speech. Cal. Cod. Civ. Pro. sect. 426.16(b)(1).

In a succinct First Amendment ruling, District Judge Dean Pregerson dismissed Aldrin's lawsuit, holding:

Because Topps has met its burden to demonstrate that Aldrin’s claim arises out of protected speech related to a public issue, the burden now shifts to Aldrin to show a likelihood of success. Aldrin has not met this burden. His arguments regarding the legal sufficiency of his claim are premised on the contention that Topps’s use of the images constitutes unprotected commercial speech. As discussed above, the images are not commercial speech, and have been utilized in furtherance of Topps’ First Amendment rights. Accordingly, Aldrin has not shown that his complaint has merit.

Kudos to Topps for taking on this important battle, and kudos to L.A. attorney Al Wickers for shepherding this case to victory.

John Dillinger v. The Godfather: The Death of the Dead Celebrity?

Michael A. Kahn — Thu, 04 Aug 2011 11:37:50 -0600

Indiana officially became the Zombieland of the Right of Publicity in 1994. That was the year it enacted Chapter 36 of Section 32 of the Indiana Code, which, among other things, provides that a personality's right of publicity lasts for 100 years after that person's death. Moreover, it didn't matter if the dead celebrity's "home" State--such as New York--had rejected a post-mortem right of publicity. That's because Indiana's statute "applies to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship." (Ind. Code 32-36-1-1(a) (emphasis added).) Since commerce tends to be national, a product bearing a dead celebrity's name would find its way into Indiana.

Welcome to Hoosier Zombieland, where Thomas Edison, Henry Ford and millions of others could rise from the dead to sue you for violating their right of publicity. Indeed, potential plaintiffs include Frankenstein (Boris Karloff, died 1969), Dracula (Bela Lugosi, died 1956), and the Phantom of the Opera (Lon Chaney, Sr., died 1930).

Ironically, though, it took a courtroom battle between the Godfather and Indiana's own John Dillinger to slap some restraints onto the Indiana statute.

The role of Eliot Ness in Dillinger, LLC v. Electronic Arts Inc. (S.D. Ind.) was played by District Judge Jane Magnus-Stinson.The plaintiff owned two registered trademarks for JOHN DILLINGER and claimed to control Mr. Dillinger’s right of publicity. The plaintiff sued Electronic Arts, Inc. ("EA") for trademark infringement and for infringement of Dillinger’s right of publicity under the Indiana right-of-publicity statute. The claims were based on references to Dillinger in a series of videogames based upon The Godfather novel and motion pictures. Specifically, the references were in the names of two weapons in the game: the "Dillinger Level Three Tommy Gun" and the "Modern Dillinger" machine gun.

In the first decision—Dillinger I—District Judge Jane Magnus-Stinson granted EA judgment on the pleadings on the right-of-publicity claim. Dillinger, LLC v. Electronic Arts Inc., 2011 WL 2446296 (S.D.Ind. June 15, 2011). The following day, she granted EA’s motion for summary judgment on the trademark infringement claims. Dillinger, LLC v. Electronic Arts Inc., 2011 WL 2457678 (S.D.Ind. June 16, 2011) ("Dillinger II").

DILLINGER I: Dillinger died on July 22, 1934 in a shootout in front of the Biograph Theater in Chicago.The core issue in Dillinger I was thus whether Indiana’s right-of-publicity statute applied to persons who died before the statute’s enactment in 1994. In a carefully reasoned opinion, Judge Magnus-Stinson granted EA judgment on the pleadings, concluding that the statute did not apply retroactively. She relied, in part, on the reasoning in Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y. 2007), which rejected a similar retroactive claim by an entity claiming to have obtained, via will, Marilyn Monroe’s right of publicity. She also relied upon Indiana estate and probate law, which would be thrown into disarray if the long-closed estate of a dead celebrity suddenly had a new asset. Indeed, could the heirs of John Dillinger's victims seek wrongful death damages against the newly enriched estate 75 years later? And what about probate taxes?

The judge also relied on a second independent ground for dismissing the right of publicity claim, namely, her conclusion that the videogame was a "literary work," and thus fell within the "literary works" exception to the Indiana statute. In reaching that conclusion, the District Court opted for a broad definition of the term because, as the judge explained, a holding that the term "literary works" doesn’t "encompass videogames would set the right-of-publicity statute up for a constitutional challenge because videogames have as much protection under the First Amendment as does ‘highbrow literature.’"

DILLINGER II: That left the trademark infringement claims, which the District Court dismissed the following day on First Amendment grounds via summary judgment. As the Court explained, EA’s First Amendment defense to the trademark claims is controlled by the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). That case established the "relatedness" test, which bars trademark claims over literary works unless the use of the plaintiff’s name is "wholly unrelated to the work or is simply a disguised commercial advertisement for the sale of goods or services." Id. (quoted in Dillinger II.) In a carefully reasoned opinion, the District Court explained that the trademark concerns were "outweighed by the danger of restricting artistic expression."

CONCLUSION: Back-to-back battles between Don Corleone and the late John Dillinger have given the rest of us a pair of victories for artistic freedom and the First Amendment . . . and a little less to fear from Zombieland.

"But You Said It On Facebook"-- Social Media Discovery and Evidentiary Issues

Pete Salsich — Mon, 13 Jun 2011 15:26:32 -0600

Geoff and I had a great opportunity to be speakers last week at the Missouri Bar Solo and Small Firm Conference. For those who don't know, this is one of the biggest conferences of its kind in the country--over 1000 lawyers from all walks of the practice. We learned a lot and made some new friends and contacts, too.

There are so many legal issues--both risks and opportunities--presented by the ever-growing world of Social Media. We didn't have all day to speak (and would have bored the audience to tears if we had), so we focused on Discovery and Evidentiary Issues with Social Media in Litigation.

I won't repeat the whole presentation here, but I will some it up: Social Media presents many new SOURCES of evidence, but it is still just evidence--all of the old evidence rules apply.

As promised, here is a .PDF copy of our Power Point presentation.

Looking forward to next year!

Intellectual Property: In The End It's The Beginning That Counts

Pete Salsich — Fri, 29 Apr 2011 11:44:43 -0600

"In the end, it's the beginning that counts."

Isn't that so true? It applies in so many settings. For example, it's a wonderful trademark tag line for the elementary school my kids attend. It just resonates with parents making that all-important choice of a first school for their children.

It applies in the business world, too. My friend Julie Taylor had a great blog post the other day about enjoying the "start" of your start-up. She's a terrific business writer who regularly works with start-up companies, and she's absolutely right.

And it really, really applies when you're dealing with Intellectual Property. If you don't concentrate on the beginning, you're not going to like the end.

For example, when two or three people begin talking about their next great idea, if they don't start with a good Nondisclosure Agreement and an agreement assigning ownership of any intellectual property they create, their greatest potential is for very expensive litigation down the road.

It's very important in the entertainment industry, too. Check out any CD -- you'll notice a copyright claim by the record company. But before the record company can claim that copyright, it has to get everyone else's rights along the way up. And if those rights aren't correctly captured when the songs are first recorded, the musician just might have a good lawsuit and the record company may find itself doling out profits it never thought it would have to share.

So if you're thinking about starting a company, producing a CD, or releasing a movie, make sure you've done your due dilligence at the start--or you may not like the ending.

How Intellectual Is Your Property? Protecting The Next Great Idea

Pete Salsich — Tue, 12 Apr 2011 08:52:51 -0600

"Two guys walk into a law office . . . "

One of the most frequent scenarios these days at BrickHouse Law involves some version of the following: Somebody comes in with a great idea for a new business, filled with excitement about how they are going to replace Facebook, or eliminate the need for shoes, etc. You get the picture.

Some of the ideas sound great -- others, well, lets just say they need a little more time on the proverbial drawing board. No matter how varied the ideas, though -- one thing is true about all of them: they cannot be protected (not in their "idea only" form).

This is one of the most important lessons all entrepreneurs need to learn (and learning it can sometimes be very expensive).

You cannot copyright an idea -- only the original expression of that idea.

You cannot patent an idea -- only the invention that embodies that idea.

You cannot trademark an idea -- only the names of the businesses and products and services embodying the idea.

So what do you do when you have the NEXT GREAT IDEA but you haven't developed it yet? You need investors, perhaps manufacturers, distributors, etc., all of whom are going to need to know what your idea is. That's where confidentiality and nondisclosure agreements ("NDA's") come in. Most entrepreneurs have heard of NDA's -- but many do not use them as early in the process as they should.

When should you use an NDA? At the moment you start talking seriously with your future business partners. That's right -- many times the most important contract you will sign is the first one with your business partner. In addition to confidentiality, that first contract should identify any ideas, concepts, treatments, designs, etc. that have already been created by you and your business partner and include language assigning ownership of this IP to your new company.

This is really only the beginning of the entreprenurial process, of course, and is not meant to cover everything that should be in your first agreement. In fact, my friend Diana Kander has a very helpful post entitled "10 Things You Must Answer Before Signing a Non-Disclosure Agreement." Check it out. My point is simply this -- the best time for you and your business partner to agree on the important stuff is before anyone has made any money!

Porn and Parody Make Odd Bedfellows

Michael A. Kahn — Thu, 27 Jan 2011 15:05:52 -0600

When you think porn, I bet the first thing that pops up isn't the Federal Antidilution Act. It does, however, over here at the Anchor Plate. And that intersection of porn, parody, and the First Amendment has inspired a contest to see who can coin the best porn parody title for any movie nominated for an Oscar at this year's Academy Awards. But first, some background:

We intellectual property lawyers have our own set of favorite quirky cases, the sexy ones you'd hesitate to bring home to Mom, the goofy ones that tap into that special brand of humor most commonly associated with junior high school boys. (Yes, as many women will readily attest, there is a 7th-grade boy lurking within every adult male, including ones who can't resist use of the phrase "pops up" in the first sentence of this post.)

If copyright is your field, look no further than the 7th Circuit's opinion in JCW Investments v. Novelty, Inc., 482 F.3d 910 (7th Cir. 2007), which memorably opens:

Meet Pull My Finger® Fred. He is a white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants. Fred is a plush doll and when one squeezes Fred's extended finger on his right hand, he farts. He also makes somewhat crude, somewhat funny statements about the bodily noises he emits, such as "Did somebody step on a duck?" or "Silent but deadly."

If your metier is trademark registrations, you'll fondly recall the late lamented STEALTH CONDOM, the all-black model marketed with the tag-line: "They'll Never See You Coming." Alas, Northrop--of Stealth Bomber renown--was not pleased, and the registration eventually died.

But trademark dilution is where most of the fun (and 1st Amendment speech) occur, mainly at the intersection of famous brands and parody. Favorite cases include the lawsuit by Mattel, owner of the trademark for the Barbie doll, against the Danish rock band Aqua over their song, "Barbie Girl"--a case that generated a Ninth Circuit opinion with this wonderful opening line by Judge Alex Kozinski: "If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong."

But let's face it, nothing taps into that humor more effectively than parody titles for porn movies. While occasionally those titles (and content) purport to spoof current political affairs--such as the profound "Who's Nailin Paylin?"--the usual target is a real movie.

(Ah, glad you returned from that link. Re-read the last couple sentences so that you can remember where you were.)

We explored this topic once upon a time in our prior blogging days, but since then there have been numerous excellent (and hundreds of so-so) additions to the list of parody porn titles, including, "Shaving Ryan's Privates," "Pulp Friction," "The Loin King," and, of course, "Riding Miss Daisy."

All of which gave us a great idea for our readers. Because the porn industry in San Fernando Valley is usually about a year behind the film industry 14 miles to the west in L.A., most of the 2010 Hollywood releases have not yet garnered a porno with a knock-off title. So here is our challenge:

For all you true believers in the "noncommercial" safe harbor under the Federal Antidilution Act, we invite you to create your nomination(s) for the best parody porn movie titles based on current films nominated, or soon to be nominated, in any one or more of the categories of this year's Academy Awards. Since those nominations aren't out yet, we toss out for your consideration some recent Golden Globes nominees: "Winter's Bone" "The Social Network," "The Black Swan," "The Rabbit Hole," "The King's Speech," "The Kids Are Alright," and "How to Train Your Dragon."

Have at it, gang. Submit your entries.

SpongeBob SquarePants vs. Internet

Michael A. Kahn — Thu, 27 Jan 2011 13:20:29 -0600

Worried about protecting your brands and creations on the Internet? Worried that your own website might draw a blood-curdling demand letter from a pitbull lawyer for a Fortune 500 company? You aren't alone.

A pair of intellectual property decisions by the influential U.S. Court of Appeals for the Second Circuit—one recently handed down, the other soon on its way—will reverberate throughout the business community, especially as companies struggle to protect their intellectual property in the ever expanding flea market known as the Internet.

Both cases feature plaintiffs who are major players in their fields—Tiffany in high-end jewelry, Viacom in entertainment—and defendants who are dominant forces on the Internet—eBay and YouTube. And both cases involve an attempt to halt massive infringement by seeking to hold the Internet hosting site liable for the actions of the infringers using the site. And finally, both cases require judges to grapple with principles of contributory infringement developed decades ago in the context of flea markets.

In Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010), the jeweler sued after discovering that thousands of vendors were selling counterfeit Tiffany merchandise on eBay. It claimed eBay was liable for contributory infringement because it was enabling the infringing conduct of others.

In Viacom International, Inc. v. YouTube, Inc., now awaiting oral argument on appeal (Case 10-3042-cv), several other entertainment companies sued YouTube for contributory copyright infringement, claiming that YouTube should be held liable for allowing its users to upload tens of thousands of copyrighted works (including hundreds of SpongeBob videos) that have been viewed millions of times.

In the pre-Internet era, the principal venue for the purchase and sale of counterfeit jewelry and bootleg recordings was the local flea market or swap meet. And because the bad guys were hard to identify, harder to sue, and impossible to collect damages from, the copyright and trademark owners instead targeted the landlord or operator of the flea market, alleging vicarious or contributory liability. The courts of that era developed a series of factors for determining the operator’s liability, including actual knowledge of the infringing activities, the right and ability to supervise to vendors, the financial benefit to hosting the infringing conduct, and the degree to which the operator contributed to the illegal activity. See, e.g., Fonovisia, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9^th Cir. 1996) (operator of a swap meet where vendors sold counterfeit music recordings).

But now the swap meet has moved onto the Web.

In both the Tiffany and Viacom cases, the district courts granted summary judgment in favor of the Internet service provider (“ISP”), applying the law developed in the flea market cases, as augmented by more recent Internet case law and statutes, including the Digital Millennium Copyright Act (“DMCA”).

On appeal of the Tiffany decision earlier this year, the Second Circuit affirmed the grant of summary judgment, holding that a finding of vicarious or contributory liability required that the ISP have more than “a general knowledge or reason to know that its service is being used to sell counterfeit goods.” Tiffany, 600 F.3d at 107. Instead, there must be a showing that eBay had “some contemporary knowledge of which particular listings are infringing.” Id. There was ample evidence that eBay did take strong action when it was notified of infringing conduct, but it did not police its website for potential infringers. The court held it was not obligated to do so.

In Viacom, the district court had to construe the limits of the “safe harbor” created for ISPs under § 512 of the Copyright Act, as amended by the DMCA. There was no dispute that YouTube had acted promptly and in accordance with the requirements of the DMCA, which grants a “safe harbor” to ISPs who receive notice of infringing content being posted on their site and act promptly to remove or disable the content. Instead, Viacom argued that YouTube’s generalized knowledge of the existence of massive copyright infringement voided the “safe harbor.”

The district court in Viacom rejected Viacom’s argument that “generalized knowledge” of infringement was sufficient basis for denying “safe harbor” protection. Instead, the judge concluded that the standard required either actual knowledge of specific instances of infringing activity or an awareness of facts from which specific instances of infringing activity is apparent. In the process, however, it rejected Viacom’s contention that certain facts known to YouTube were “red flags” of infringement that YouTube should not have ignored.

The two related issues on appeal in Viacom are thus (1) what constitutes “actual knowledge of infringing activity” sufficient to subject an ISP to liability for copyright infringement?, and (2) what constitutes a “red flag” that would obligate an ISP to do further investigation?

The Second Circuit’s ruling in Viacom, expected this Spring, should help clarify the measures available to companies seeking to protect their intellectual property online.

The BrickHouse Law Group is Growing (Again!)

Pete Salsich — Tue, 18 Jan 2011 09:02:05 -0600

Only a few months ago we were bragging around here about our good fortune to welcome David Groce as a principal of our entrepreneurial law firm. David's addition greatly enhanced our ability to provide a full range of business services counseling to our clients.

Now we get to brag again -- this time about our newest partner, Michael A. Kahn. Some of you may know Mike from our past blogging efforts together on the old Fair Use Blog, and more recently Mike has been a contributor to Bryan Cave's Art Law Blog. Others may know Mike as the successful author of many novels, including Trophy Widow. Still others may know him from his long career as a nationally-known First Amendment, media and intellectual property trial lawyer.

We know him all of those ways, too, but mostly as a good friend, great guy and exceptional attorney. Truth be told, we've been stalking Mike for a while. We've always thought he was a perfect fit for our entrepreneurial, client-centered approach to practicing -- he doesn't like the billable hour any more than we do!

Mike is joining the BrickHouse Law Group after more than 25 years of large law firm practice, and he'll be joining the AnchorPlate blog as an author. I hope you enjoy hearing from him as much as we're going to enjoy practicing law with him.

Welcome to the BrickHouse, Mike!

Upcoming Panel: "Online Communities for Your NonProfit: Legal Aspects of Social Media"

Pete Salsich — Thu, 06 Jan 2011 11:46:32 -0600

As is readily apparent around here, I am at best a sporadic legal blogger. I have periods of time when I'm fairly active with my posts, and other (sometimes long) stretches of time when I seem to disappear. I'm more consistent with my social media outreach, particularly on Twitter, but even there I could be much more prolific. I'm happy to say, however, that it looks like 2011 will be much busier on both fronts.

It kicks off for me in two weeks, when I get to appear on a panel with one of my legal blogging heroes, Dennis Kennedy. The program is entitled "Communities for Your Nonprofit: Legal Aspects of Social Media" and it will be presented at the Schlafly branch of the St. Louis Public Library on Thursday, January 20 at 3:00 p.m. (Scroll down to Jan. 20) Also on the panel will be a new colleague, Elizabeth Cox, a fellow intellectual property and entertainment lawyer in St. Louis. Check out her blog, Design/Sing/Act/Write/Law, and come out and see us if you're in St. Louis.

There's more good news on the way, too -- including growth at The BrickHouse Law Group (in the form of an old friend and fellow legal blogger) and a move to a new office (in an old brick building, of course!). Stay tuned -- I'll be back.

The BrickHouse Law Group is Growing

Pete Salsich — Tue, 05 Oct 2010 10:23:03 -0600

Sometimes you're smart. Sometimes you're good. Sometimes you just get lucky. I'd like to think that here at The BrickHouse Law Group we are fairly smart, and often good. But I know that right now we are very lucky.

We are lucky that for much of the past year, unbeknownst to us, a friend and one-time client, David B. Groce, was thinking many of the same things we've been thinking. Such as, how to practice law in a more efficient, value-driven way and how to leverage years of experience and expertise with large corporations and law firms into teachable components of value to small and medium-sized businesses. In short, how to be a legal entreprenuer for entreprenurial clients. You know, stuff we've been learning from Patrick Lamb, Jay Shepherd, and others.

We are even luckier that David agreed to join The BrickHouse Law Group as a principal. He brings 25 years of experience as a general counsel and corporate executive at Fortune 500 companies. He has seen--from the client's perspective--all of the good and bad that goes along with the traditional law firm model, and he has been a tremendous asset to us already.

In addition to joining the firm, David will be joining The AnchorPlate blog as an author. You'll get to here from him directly, and I think you'll find that he has a lot to say.

Welcome to The BrickHouse, David!