Bit Parts

The U.S. Court of Appeals for the Ninth Circuit decided that the widow of film director/producer Toby Halicki reserved the merchandising rights to a remake of the car “Eleanor,” originally featured in his 1974 film Gone in 60 Seconds, when she signed a sequel rights deal with Hollywood Pictures. Halicki Films LLC v. Sanderson Sales and Marketing, 06-55806. The appeals court further found that the district court should consider whether the auto “Eleanor” may be subject to copyright protection. The court acknowledged that it “has recognized copyright protection for characters that are especially distinctive.” The Ninth Circuit also allowed Denice Halicki to continue with her trademark infringement claims over “Eleanor” and Gone in 60 Seconds.

Trademark Infringement/First Amendment Defense

The U.S. Court of Appeals for the Ninth Circuit decided that the First Amendment protected a video game developer from infringement claims over use of a modified trademark of an adult entertainment club. E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., 06-56237. The defendants' “Grand Auto Theft: San Andreas” enables video game players to engage in gangster-style culture, including in the fictional “East Los Santos” modeled after East Los Angeles. The owner of the Play Pen strip club in downtown Los Angeles filed suit over the video game's “Pig Pen” strip club. The Ninth Circuit explained that the relevant test is whether the defendants' use has “artistic relevance to the underlying work” or nevertheless “explicitly misleads as to the source or the content of the work.” “Although this test traditionally applies to uses of a trademark in the title of an artistic work,” the appeals court noted, “there is no principled reason why it ought not also apply to the use of a trademark in the body of the work.” The court then found that “possibly the only way” to “develop a cartoon-style parody of East Los Angeles” would be “to recreate a critical mass of the businesses and buildings that constitute it.” The appeals court added: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage. Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club. A player can enter the virtual strip club in Los Santos, but ESS has provided no evidence that the setting is anything but generic.”

Crew Member Injury/Employee Status

The Court of Appeal of California, Second District, affirmed that a crew member for the TV series “Dragnet” was a “special employee” and therefore limited to workers' compensation as his sole remedy for a hand injury he sustained while working on the set. Carpenter v. Universal City Studios L.L.L.P. (UCS), B186031. Christopher Carpenter had sued UCS for premises and product liability on the ground that he was employed by Universal Network Television (UNT) and that UCS was the soundstage landlord. UCS argued it was Carpenter's “special employer” under the borrowed servant doctrine. The court of appeal considered intent in an unsigned personnel services agreement (PSA) between UNT and the payroll company Entertainment Partners Services Group (EP). In its unpublished opinion, the court noted that the draft stated “for purposes of workers' compensation, that UNT and [the designated personnel employer] EP agreed that other 'Producer Entities' would be deemed 'special employers' and would be involved in directing and supervising crew. 'Producer Entitles' were defined as, among other things, others furnishing the services of a person to UNT for Dragnet, and UNT's 'affiliated companies.' [Universal TV group controller Melissa] Leffler, who negotiated the agreement, testified that 'affiliated companies' meant UCS.”

Merchandising Rights/Film Remakes

The U.S. Court of Appeals for the Ninth Circuit decided that the widow of film director/producer Toby Halicki reserved the merchandising rights to a remake of the car “Eleanor,” originally featured in his 1974 film Gone in 60 Seconds, when she signed a sequel rights deal with Hollywood Pictures. Halicki Films LLC v. Sanderson Sales and Marketing, 06-55806. The appeals court further found that the district court should consider whether the auto “Eleanor” may be subject to copyright protection. The court acknowledged that it “has recognized copyright protection for characters that are especially distinctive.” The Ninth Circuit also allowed Denice Halicki to continue with her trademark infringement claims over “Eleanor” and Gone in 60 Seconds.

Trademark Infringement/First Amendment Defense

The U.S. Court of Appeals for the Ninth Circuit decided that the First Amendment protected a video game developer from infringement claims over use of a modified trademark of an adult entertainment club. E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., 06-56237. The defendants' “Grand Auto Theft: San Andreas” enables video game players to engage in gangster-style culture, including in the fictional “East Los Santos” modeled after East Los Angeles. The owner of the Play Pen strip club in downtown Los Angeles filed suit over the video game's “Pig Pen” strip club. The Ninth Circuit explained that the relevant test is whether the defendants' use has “artistic relevance to the underlying work” or nevertheless “explicitly misleads as to the source or the content of the work.” “Although this test traditionally applies to uses of a trademark in the title of an artistic work,” the appeals court noted, “there is no principled reason why it ought not also apply to the use of a trademark in the body of the work.” The court then found that “possibly the only way” to “develop a cartoon-style parody of East Los Angeles” would be “to recreate a critical mass of the businesses and buildings that constitute it.” The appeals court added: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage. Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club. A player can enter the virtual strip club in Los Santos, but ESS has provided no evidence that the setting is anything but generic.”