Cameo Clips

Reversing, the court of appeal explained in its unpublished opinion: “Plaintiff did not seek remedies for copyright infringement. Rather, plaintiff sought damages and relief against the unauthorized use of her name and likeness for promotional and commercial purposes including the sale of cellular telephone wallpaper. Plaintiff did not seek any relief on claims that defendants had misappropriated her name or likeness by allowing the program to be broadcast or distributed. [Vogel's] fourth amended complaint is based on the use of her name and likeness on Internet Web sites promoting the 'Bikini Destination' films and selling and marketing cellular telephone wallpaper without her consent and authorization.”

The U.S. District Court for the Eastern District of New York decided that the use of a photograph to promote the TV program Inside the Mafia was a permissible incidental use under New York's right-of-publicity statute, New York Civil Rights Law '51. Alfano v. NGHT Inc., 06 CV 3511(NG)(JO). Robert Alfano had been photographed helping former Mafia leader John Gotti into a car at a New York courthouse during Gotti's 1991 trial. The encounter occurred because Alfano had left the courthouse by the same exit as Gotti with a friend who was a law clerk for Gotti's lawyer and Gotti asked Alfano to help him to the car. In 2005, the photo was used in phone kiosks, newspaper ads and press kits to promote the National Geographic Channel program about the Mafia, though the photo wasn't included in the program itself. Alfano, who originally attended the trial on his own accord out of curiosity, filed suit under '51. He also sued the photo-licensing service Corbis.

Granting summary judgment for the defendants, the district court found in part that “although plaintiff characterizes Inside the Mafia as a 'docudrama' which was not strictly historically accurate, with regard to the film ' he does not make
allegations that amount to its being the kind of 'substantially fictional' material which, despite claimed newsworthiness, is ” nothing more than [an attempt] to trade on the persona of [plaintiff]. ' Turning to the question of advertising, a media publication with newsworthy content may use an individual's image in an advertisement that reproduces that content ' even if the particular image used does not appear in the media in question, as long as the use otherwise qualifies as an 'incidental use' by illustrating the content of newsworthy media.”

The court also found that Corbis's licensing of the photo to NGHT and display of the photo on the Corbis Web site to attract licensing to others were permissible exceptions under '51.

The U.S. District Court for the Western District of Oklahoma denied summary judgment to Disney Enterprises in a trademark infringement suit filed against the company over Disney merchandise from the animated motion picture Cars. Collectable Promotional Products Inc. (CPP) v. Disney Enterprises Inc., CIV-06-1187-D. In 1994, CPP had submitted an application for federal trademark registration of “Real Cars” and a related logo of the phrase over a chevron design, for use with miniature toys. CPP entered into an agreement with Mattel for the manufacture of two limited edition toy “Real Cars” in 1995 and 1996. In 1998, the U.S. Patent and Trademark Office (PTO) granted CPP's application and in 2004 accepted CPP's declaration of continuous use. The PTO granted approval in 2006 of Disney's federal trademark registration application for “Cars” superimposed over a chevron design, for use with “card games; electric action toys; inflatable toys; manipulative games; plush toys; stuffed toys; toy vehicles; toy cars; toy trucks.”

Letting CPP's suit against Disney move forward, the district court noted: “While cancellation [of CPP's trademark] could arguably be sought on the grounds that CPP fraudulently misrepresented the date of [original] use or otherwise committed fraud in its [1994] trademark application, Defendants do not allege that it did so. Defendants offer no authority to support the contention that cancellation of the trademark as void ab initio may be asserted, after the mark has become uncontestable, for reasons other than the specific defenses enumerated in 15 '1115(b). Nor has the [c]ourt located such authority. Certainly, CPP's misstatement in the 1994 application regarding the date on which it first used the mark in commerce is a matter of concern to the [c]ourt, and the [c]ourt does not find persuasive [CPP owner Lea] Knight's argument that he misunderstood the meaning of 'use in commerce.' The [c]ourt's concerns, however, involve questions of credibility which cannot properly be decided when ruling on a summary judgment motion.”

Disney also claimed that CPP abandoned its trademark, though CPP had begun selling its products on eBay in 1999. The court found: “In this case, the parties have not submitted authority directly addressing whether sales on eBay constitute the 'ordinary course of trade' or the impact of eBay sales on a claim of abandonment. ' However, one court has indicated that evidence of attempts to sell, including attempted sales 'through the internet' may be sufficient to create a factual dispute regarding a claim of abandonment.”

Copyright Preemption/Accounting Claims

The U.S. District Court for the Central District of California remanded to Los Angeles Superior Court a complaint by actor Don Johnson's company for an accounting of 50% of the profits from the TV series “Nash Bridges.” Don Johnson Productions Inc. (DJP) v. Rysher Entertainment Inc., CV 09-1906 MMM (JCx). Rysher had previously removed the complaint to federal court on the ground that DJP's claim as copyright co-owner of the TV series was preempted by federal law. But the district court noted “federal courts regularly dismiss copyright complaints that present only questions of contract law. ' DJP's rights in the Nash Bridges copyright derive entirely from the [DJ/Rysher production and development] agreement; the case is thus essentially a contract dispute. ' [A]n action by a co-owner of a copyright for an accounting does not arise under federal law.” The court went on to find “DJP's unjust enrichment and conversion claims are based on defendants' violation of DJP's state law rights as a co-owner. Accordingly, DJP's unjust enrichment and conversion claims are not preempted.”

The California Court of Appeal, Second District, ruled that a model's common and statutory right-of-publicity claims over use of her name, likeness and image to promote a series of videos weren't preempted by the federal copyright law. Vogel v. Bennett, B207248. Victoria Vogel appeared as a model and spokesperson in several “Bikini Destinations” videos. She consented to use of her image but claimed promised conditions, such as giving her joint ownership of the videos and allowing her content approval rights, were never met. The Los Angeles Superior Court granted summary judgment to the defendants by finding that Vogel's state claims were preempted.

Reversing, the court of appeal explained in its unpublished opinion: “Plaintiff did not seek remedies for copyright infringement. Rather, plaintiff sought damages and relief against the unauthorized use of her name and likeness for promotional and commercial purposes including the sale of cellular telephone wallpaper. Plaintiff did not seek any relief on claims that defendants had misappropriated her name or likeness by allowing the program to be broadcast or distributed. [Vogel's] fourth amended complaint is based on the use of her name and likeness on Internet Web sites promoting the 'Bikini Destination' films and selling and marketing cellular telephone wallpaper without her consent and authorization.”

The U.S. District Court for the Eastern District of New York decided that the use of a photograph to promote the TV program Inside the Mafia was a permissible incidental use under New York's right-of-publicity statute, New York Civil Rights Law '51. Alfano v. NGHT Inc., 06 CV 3511(NG)(JO). Robert Alfano had been photographed helping former Mafia leader John Gotti into a car at a New York courthouse during Gotti's 1991 trial. The encounter occurred because Alfano had left the courthouse by the same exit as Gotti with a friend who was a law clerk for Gotti's lawyer and Gotti asked Alfano to help him to the car. In 2005, the photo was used in phone kiosks, newspaper ads and press kits to promote the National Geographic Channel program about the Mafia, though the photo wasn't included in the program itself. Alfano, who originally attended the trial on his own accord out of curiosity, filed suit under '51. He also sued the photo-licensing service Corbis.

Granting summary judgment for the defendants, the district court found in part that “although plaintiff characterizes Inside the Mafia as a 'docudrama' which was not strictly historically accurate, with regard to the film ' he does not make
allegations that amount to its being the kind of 'substantially fictional' material which, despite claimed newsworthiness, is ” nothing more than [an attempt] to trade on the persona of [plaintiff]. ' Turning to the question of advertising, a media publication with newsworthy content may use an individual's image in an advertisement that reproduces that content ' even if the particular image used does not appear in the media in question, as long as the use otherwise qualifies as an 'incidental use' by illustrating the content of newsworthy media.”

The court also found that Corbis's licensing of the photo to NGHT and display of the photo on the Corbis Web site to attract licensing to others were permissible exceptions under '51.

The U.S. District Court for the Western District of Oklahoma denied summary judgment to Disney Enterprises in a trademark infringement suit filed against the company over Disney merchandise from the animated motion picture Cars. Collectable Promotional Products Inc. (CPP) v. Disney Enterprises Inc., CIV-06-1187-D. In 1994, CPP had submitted an application for federal trademark registration of “Real Cars” and a related logo of the phrase over a chevron design, for use with miniature toys. CPP entered into an agreement with Mattel for the manufacture of two limited edition toy “Real Cars” in 1995 and 1996. In 1998, the U.S. Patent and Trademark Office (PTO) granted CPP's application and in 2004 accepted CPP's declaration of continuous use. The PTO granted approval in 2006 of Disney's federal trademark registration application for “Cars” superimposed over a chevron design, for use with “card games; electric action toys; inflatable toys; manipulative games; plush toys; stuffed toys; toy vehicles; toy cars; toy trucks.”

Letting CPP's suit against Disney move forward, the district court noted: “While cancellation [of CPP's trademark] could arguably be sought on the grounds that CPP fraudulently misrepresented the date of [original] use or otherwise committed fraud in its [1994] trademark application, Defendants do not allege that it did so. Defendants offer no authority to support the contention that cancellation of the trademark as void ab initio may be asserted, after the mark has become uncontestable, for reasons other than the specific defenses enumerated in 15 '1115(b). Nor has the [c]ourt located such authority. Certainly, CPP's misstatement in the 1994 application regarding the date on which it first used the mark in commerce is a matter of concern to the [c]ourt, and the [c]ourt does not find persuasive [CPP owner Lea] Knight's argument that he misunderstood the meaning of 'use in commerce.' The [c]ourt's concerns, however, involve questions of credibility which cannot properly be decided when ruling on a summary judgment motion.”

Disney also claimed that CPP abandoned its trademark, though CPP had begun selling its products on eBay in 1999. The court found: “In this case, the parties have not submitted authority directly addressing whether sales on eBay constitute the 'ordinary course of trade' or the impact of eBay sales on a claim of abandonment. ' However, one court has indicated that evidence of attempts to sell, including attempted sales 'through the internet' may be sufficient to create a factual dispute regarding a claim of abandonment.”