Bit Parts

Copyright Infringement/Claims Assignment

The U.S. District Court for the Eastern District of Texas ruled that a music publisher that assigned 50% of its copyrights in compositions to a third party, along with “all claims for infringement of the copyrights whether now or hereafter existing,” lacked standing to pursue an infringement action over two of those songs. Isbell v. DM Records Inc., 4:07-cv-146. In 2002, Alvertis Isbell's Alvert Music sued DM Records alleging infringement of the songs “Dazzey Duks” and “Whoomp! (There It Is).” In 2004, Alvert Music assigned copyrights and infringement-claims rights to Bridgeport Music. Dismissing Isbell's suit against DM Records, the district court noted: “In this Circuit, ownership of a copyright, and the attendant privileges, and ownership of an existing claim for copyright infringement may be separated by contract.” The court went on to explain: “Isbell could have easily assigned 'fifty percent (50%) [or any percentage for that matter] of claims for infringement of the copyrights whether now or hereafter existing ” But this was not the language used in the contract. Isbell assigned the entirety of that asset rather than a mere portion of it. Isbell also argues that the assignment is contingent upon the outcome of this litigation. However, no such conditional language is present in, or fairly inferable from, the contract. The works sold by Isbell presumably were sold at a discount to reflect the possibility that DM Records could be adjudged in this action to be the rightful owner thereof.”

Copyright Infringement/Substantial Similarity

The U.S. District Court for the Southern District of New York found no substantial similarity between a historical play and an investigative book about the death of Pope John Paul I. Crane v. Poetic Products Ltd., 07 Civ. 7063(BSJ)(FM). Roger R. Crane, author of the play The Last Confession (TLC) filed for a declaratory judgment of non-infringement against Poetic Products, the owner of the copyright in the book In God's Name: An Investigation into the Murder of Pope John Paul I (IGN). Poetic Products counterclaimed alleging infringement. The district court noted on summary judgment: “While IGN and TLC both share many of the same characters, nearly all of them are historical figures and are therefore unprotectable elements. Further, the protagonist of TLC is Cardinal Benelli, who figures only as a minor character in IGN. Benelli is on-stage in the majority of the scenes in TLC, and it is his perspective that dominates the play. IGN, in contrast, focuses primarily on the figure of Pope John Paul I. The difference in main characters is critical evidence of a lack of substantial similarity.” The court added: “The Last Confession also has several themes, most notably the tension between religious devotion and human ambition, as well as Cardinal Benelli's loss of faith and ultimate redemption. Because it is a factual work, In God's Name's themes are more difficult to discern, although the book focuses primarily on the saint-like character of Pope John Paul I in contrast to the corrupt nature of his colleagues in the Vatican. Both works, in their own ways, speculate on how the future of the Church might have been different if John Paul I had not died, but this particular theme, which would arise out of any treatment of the Pope's death, is not protectable by copyright.”

Film/Products in Scenes

The U.S. District Court for the Southern District of New York decided that the brief appearance of the plaintiff's Silver Slugger pinball machine without permission in the background of a scene in the comedy film What Women Want was a non-actionable de minimis use. Gottlieb Development LLC v. Paramount Pictures Corp., 08 civ. 2416(DC). The court thus found no copyright or trademark infringement. On the plaintiff's copyright infringement claim, the district court observed: “The scene in question lasts only three-and-a-half minutes, and the Silver Slugger appears in the scene sporadically, for no more than a few seconds at a time. More importantly, the pinball machine is always in the background; it is never seen in the foreground. It never appears by itself or in a close-up. It is never mentioned and plays no role in the plot. It is almost always partially obscured (by [actor Mel] Gibson and pieces of furniture), and is fully visible for only a few seconds during the entire scene. The Designs (on the backglass and playfield of the pinball machine) are never fully visible and are either out of focus or obscured. Indeed, an average observer would not recognize the Designs as anything other than generic designs in a pinball machine.” As for the trademark infringement claim, the court found no likelihood of consumer confusion, adding: “There is no indication that Paramount deliberately placed the Silver Slugger into the scene to capitalize on the good will associated with [plaintiff] Gottlieb's mark. Paramount could just as well have substituted any other pinball machines to meet its purpose, and, in fact, there was a second, apparently unrelated pinball machine in the scene as well.”

Copyright Infringement/Claims Assignment

The U.S. District Court for the Eastern District of Texas ruled that a music publisher that assigned 50% of its copyrights in compositions to a third party, along with “all claims for infringement of the copyrights whether now or hereafter existing,” lacked standing to pursue an infringement action over two of those songs. Isbell v. DM Records Inc., 4:07-cv-146. In 2002, Alvertis Isbell's Alvert Music sued DM Records alleging infringement of the songs “Dazzey Duks” and “Whoomp! (There It Is).” In 2004, Alvert Music assigned copyrights and infringement-claims rights to Bridgeport Music. Dismissing Isbell's suit against DM Records, the district court noted: “In this Circuit, ownership of a copyright, and the attendant privileges, and ownership of an existing claim for copyright infringement may be separated by contract.” The court went on to explain: “Isbell could have easily assigned 'fifty percent (50%) [or any percentage for that matter] of claims for infringement of the copyrights whether now or hereafter existing ” But this was not the language used in the contract. Isbell assigned the entirety of that asset rather than a mere portion of it. Isbell also argues that the assignment is contingent upon the outcome of this litigation. However, no such conditional language is present in, or fairly inferable from, the contract. The works sold by Isbell presumably were sold at a discount to reflect the possibility that DM Records could be adjudged in this action to be the rightful owner thereof.”

Copyright Infringement/Substantial Similarity

The U.S. District Court for the Southern District of New York found no substantial similarity between a historical play and an investigative book about the death of Pope John Paul I. Crane v. Poetic Products Ltd., 07 Civ. 7063(BSJ)(FM). Roger R. Crane, author of the play The Last Confession (TLC) filed for a declaratory judgment of non-infringement against Poetic Products, the owner of the copyright in the book In God's Name: An Investigation into the Murder of Pope John Paul I (IGN). Poetic Products counterclaimed alleging infringement. The district court noted on summary judgment: “While IGN and TLC both share many of the same characters, nearly all of them are historical figures and are therefore unprotectable elements. Further, the protagonist of TLC is Cardinal Benelli, who figures only as a minor character in IGN. Benelli is on-stage in the majority of the scenes in TLC, and it is his perspective that dominates the play. IGN, in contrast, focuses primarily on the figure of Pope John Paul I. The difference in main characters is critical evidence of a lack of substantial similarity.” The court added: “The Last Confession also has several themes, most notably the tension between religious devotion and human ambition, as well as Cardinal Benelli's loss of faith and ultimate redemption. Because it is a factual work, In God's Name's themes are more difficult to discern, although the book focuses primarily on the saint-like character of Pope John Paul I in contrast to the corrupt nature of his colleagues in the Vatican. Both works, in their own ways, speculate on how the future of the Church might have been different if John Paul I had not died, but this particular theme, which would arise out of any treatment of the Pope's death, is not protectable by copyright.”

Film/Products in Scenes

The U.S. District Court for the Southern District of New York decided that the brief appearance of the plaintiff's Silver Slugger pinball machine without permission in the background of a scene in the comedy film What Women Want was a non-actionable de minimis use. Gottlieb Development LLC v. Paramount Pictures Corp., 08 civ. 2416(DC). The court thus found no copyright or trademark infringement. On the plaintiff's copyright infringement claim, the district court observed: “The scene in question lasts only three-and-a-half minutes, and the Silver Slugger appears in the scene sporadically, for no more than a few seconds at a time. More importantly, the pinball machine is always in the background; it is never seen in the foreground. It never appears by itself or in a close-up. It is never mentioned and plays no role in the plot. It is almost always partially obscured (by [actor Mel] Gibson and pieces of furniture), and is fully visible for only a few seconds during the entire scene. The Designs (on the backglass and playfield of the pinball machine) are never fully visible and are either out of focus or obscured. Indeed, an average observer would not recognize the Designs as anything other than generic designs in a pinball machine.” As for the trademark infringement claim, the court found no likelihood of consumer confusion, adding: “There is no indication that Paramount deliberately placed the Silver Slugger into the scene to capitalize on the good will associated with [plaintiff] Gottlieb's mark. Paramount could just as well have substituted any other pinball machines to meet its purpose, and, in fact, there was a second, apparently unrelated pinball machine in the scene as well.”