Cameo Clips

COPYRIGHT ASSIGNMENTS/CO-OWNERS' RIGHTS

The U.S. District Court for the Eastern District of Wisconsin decided that co-owners of a copyright can grant exclusive rights in their work to third parties on their own. Thus, a music video company that obtained copyright assignments from two of the three co-creators of the music video “What What (In the Butt)” (WWITB) had the right to file suit over an episode of the TV series South Park that recreated a portion of WWITB to parody the viral-video craze. Brownmark Films LLC v. Comedy Partners, 10-CV-101. District Judge J.P. Stadtmueller noted that “no one can credibly argue that the risk of limiting the other co-owner's rights [to independently exploit the work] can be used to artificially restrict the alienability of the co-owner's right to transfer their interest in the copyright.” The district court's decision takes issue with opposing precedent from the Ninth Circuit.

Emphasizing that “context is king,” Judge Stadtmueller determined he could rule on the defendants' fair use defense on a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure ' especially because the “complaint discusses a very limited context for the alleged infringement. ' In other words, the complaint does not allege that the defendants are somehow using the WWITB video in any other form other than in the production and distribution of the [South Park] episode 'Canada On Strike.'”

Judge Stadtmueller concluded there was fair use, noting in part that “defendants' work did not mirror the original WWITB video ' indeed, the derivative work was a cartoon of a nine-year-old boy [i.e., the South Park character Butters Stotch] repeating just enough lines of WWITB to conjure up the original work. ' The use of the imagery and words of the original work was all but the minimum needed by the defendants to accomplish their goal of commenting on a social phenomenon.”

COPYRIGHT CHAIN OF TITLE/FILM EXECUTIVE AFFIDAVIT

The U.S. Court of Appeals for the Eighth Circuit ruled that a contested chain-of-title affidavit from a Warner Bros. executive was acceptable, in deciding that the film studio could prevent some unauthorized uses in merchandise of character traits from the movies The Wizard of Oz and Gone with the Wind. Warner Bros. Entertainment Inc. v. One X Productions, 10-1743. (The case also involved the animated cat-and-mouse characters Tom & Jerry.) The U.S. District Court for the Eastern District of Missouri granted summary judgment for Warner Bros. and issued a permanent injunction barring the defendants' use of character images in a variety of products, including apparel, lunch boxes and three-dimensional figures. The defendants argued the images were taken from promotional posters, lobby cards and press photos that had fallen into the public domain for failure to properly include copyright notices when utilized by original film studio MGM decades ago.

The movies themselves retain registered-copyright protection. To establish ownership, Warner Bros. submitted an affidavit from an in-house attorney, Kate Chilton. The affidavit detailed copyright chain of title through assignments and company mergers. The defendants challenged the affidavit under Rule 56 of the Federal Rules of Civil Procedure for lack of attached documentation and personal knowledge on Chilton's part. Upholding admission of the Chilton affidavit, the Eight Circuit noted: “There is no dispute that the referenced documents were produced to AVELA [i.e., the group of defendants] in discovery. In addition, they were in the record because they were attached to Warner Bros.'s original complaint. Despite having had a full opportunity to review the documents establishing chain of title to the copyrights, AVELA points to no inadequacies in the chain-of-title documents themselves. Because the documents would be admissible at trial, the error in form at the summary judgment stage was harmless in this case.” As to the issue of Chilton's personal knowledge, the appeals court explained: “Chilton's affidavit simply explained how to navigate the array of documents showing that the asserted copyrights were valid and that Warner Bros. had obtained ownership of them. ' Here, Chilton's opinion about how the multiple documents combined to establish chain of title could be viewed as helpful to the factfinder.”

Then affirming the injunction in part and reversing and remanding, the Eighth Circuit observed that “freedom to make new works based on public domain materials ends where the resulting derivative work comes into conflict with a valid copyright. ' In other words, if material related to certain characters is in the public domain, but later works covered by copyright [i.e., the Warner film properties] add new aspects to those characters, a work developed from the public domain material infringes the copyrights in the later works to the extent that it incorporates aspects of the characters developed solely in those later works.” The appeals court went on to describe these aspects as “'consistent, widely identifiable traits.'” Otherwise, for example, the court noted, “if the publicity material images from Gone with the Wind were sufficient to inject all visual depictions of the characters Scarlett O'Hara and Rhett Butler into the public domain, then almost any image of Vivian Leigh or Clark Gable would be sufficient to do so as well. Therefore, the only images in the public domain are the precise images in the publicity materials for Gone with the Wind.”

The U.S. Court of Appeals for the First Circuit affirmed an award of attorney fees that greatly exceeded the statutory damages the music infringement plaintiff obtained. Spooner v. EEN Inc., 10-2393. Songwriter/recording artist Jason Spooner had sued over the unauthorized use of his song “Who Am I” in a TV skiing commercial. In an earlier phase of the case, the U.S. District Court for the District of Maine decided that Spooner's song and sound recording together constituted one “work” for the purpose of determining statutory damages. Spooner v. EEN Inc., 08-CV-262 (D.Me. 2010). The EEN media-production defendants offered Spooner a $20,000 settlement, which he declined; he settled with defendant Sugarloaf/USA ski resort for $30,000. The district court then awarded Spooner $40,000 in statutory damages ' minus the Sugarloaf settlement, resulting in a $10,000 net award ' and a permanent injunction against EEN. Spooner requested $175,714.30 in attorney fees under Sec. 505 of the Copyright Act. The district court awarded him $98,745.80, which EEN appealed.

The First Circuit described the Spooner case as “the litigation equivalent of hand-to-hand combat.” The appeals court then noted of EEN's appeal that “defendants' principal claim is that the plaintiff's request for fees reflects such a degree of extravagance that the only appropriate response to it was an outright denial of any fees.” But the appeals court went on to find: “The [district] court observed approvingly that the plaintiff had pared down his fee request before filing it, writing off more than 100 hours. ' It trimmed the request even further, winnowing out hours that it deemed 'readily attributable' to the plaintiff's claims against the Sugarloaf defendants. Similarly, it deleted hours relating to the plaintiff's quixotic endeavor to secure a pretrial attachment of [EEN's owner] property. It then adjusted the time spent to reflect the plaintiff's unsuccessful attempt to split his infringement claim into two pieces (one relating to composition and the other to recording), deducting time attributable to that failed initiative.”

The appeals court also considered that the district court “explained that the defendants had willfully infringed the plaintiff's copyright and, moreover, that the plaintiff had secured a permanent injunction, which 'may have more value ' than the statutory damage award'” and that, in any case, “[t]he law, however, does not demand strict proportionality between fees and damages.”

COPYRIGHT ASSIGNMENTS/CO-OWNERS' RIGHTS

The U.S. District Court for the Eastern District of Wisconsin decided that co-owners of a copyright can grant exclusive rights in their work to third parties on their own. Thus, a music video company that obtained copyright assignments from two of the three co-creators of the music video “What What (In the Butt)” (WWITB) had the right to file suit over an episode of the TV series South Park that recreated a portion of WWITB to parody the viral-video craze. Brownmark Films LLC v. Comedy Partners, 10-CV-101. District Judge J.P. Stadtmueller noted that “no one can credibly argue that the risk of limiting the other co-owner's rights [to independently exploit the work] can be used to artificially restrict the alienability of the co-owner's right to transfer their interest in the copyright.” The district court's decision takes issue with opposing precedent from the Ninth Circuit.

Emphasizing that “context is king,” Judge Stadtmueller determined he could rule on the defendants' fair use defense on a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure ' especially because the “complaint discusses a very limited context for the alleged infringement. ' In other words, the complaint does not allege that the defendants are somehow using the WWITB video in any other form other than in the production and distribution of the [South Park] episode 'Canada On Strike.'”

Judge Stadtmueller concluded there was fair use, noting in part that “defendants' work did not mirror the original WWITB video ' indeed, the derivative work was a cartoon of a nine-year-old boy [i.e., the South Park character Butters Stotch] repeating just enough lines of WWITB to conjure up the original work. ' The use of the imagery and words of the original work was all but the minimum needed by the defendants to accomplish their goal of commenting on a social phenomenon.”

COPYRIGHT CHAIN OF TITLE/FILM EXECUTIVE AFFIDAVIT

The U.S. Court of Appeals for the Eighth Circuit ruled that a contested chain-of-title affidavit from a Warner Bros. executive was acceptable, in deciding that the film studio could prevent some unauthorized uses in merchandise of character traits from the movies The Wizard of Oz and Gone with the Wind. Warner Bros. Entertainment Inc. v. One X Productions, 10-1743. (The case also involved the animated cat-and-mouse characters Tom & Jerry.) The U.S. District Court for the Eastern District of Missouri granted summary judgment for Warner Bros. and issued a permanent injunction barring the defendants' use of character images in a variety of products, including apparel, lunch boxes and three-dimensional figures. The defendants argued the images were taken from promotional posters, lobby cards and press photos that had fallen into the public domain for failure to properly include copyright notices when utilized by original film studio MGM decades ago.

The movies themselves retain registered-copyright protection. To establish ownership, Warner Bros. submitted an affidavit from an in-house attorney, Kate Chilton. The affidavit detailed copyright chain of title through assignments and company mergers. The defendants challenged the affidavit under Rule 56 of the Federal Rules of Civil Procedure for lack of attached documentation and personal knowledge on Chilton's part. Upholding admission of the Chilton affidavit, the Eight Circuit noted: “There is no dispute that the referenced documents were produced to AVELA [i.e., the group of defendants] in discovery. In addition, they were in the record because they were attached to Warner Bros.'s original complaint. Despite having had a full opportunity to review the documents establishing chain of title to the copyrights, AVELA points to no inadequacies in the chain-of-title documents themselves. Because the documents would be admissible at trial, the error in form at the summary judgment stage was harmless in this case.” As to the issue of Chilton's personal knowledge, the appeals court explained: “Chilton's affidavit simply explained how to navigate the array of documents showing that the asserted copyrights were valid and that Warner Bros. had obtained ownership of them. ' Here, Chilton's opinion about how the multiple documents combined to establish chain of title could be viewed as helpful to the factfinder.”

Then affirming the injunction in part and reversing and remanding, the Eighth Circuit observed that “freedom to make new works based on public domain materials ends where the resulting derivative work comes into conflict with a valid copyright. ' In other words, if material related to certain characters is in the public domain, but later works covered by copyright [i.e., the Warner film properties] add new aspects to those characters, a work developed from the public domain material infringes the copyrights in the later works to the extent that it incorporates aspects of the characters developed solely in those later works.” The appeals court went on to describe these aspects as “'consistent, widely identifiable traits.'” Otherwise, for example, the court noted, “if the publicity material images from Gone with the Wind were sufficient to inject all visual depictions of the characters Scarlett O'Hara and Rhett Butler into the public domain, then almost any image of Vivian Leigh or Clark Gable would be sufficient to do so as well. Therefore, the only images in the public domain are the precise images in the publicity materials for Gone with the Wind.”

The U.S. Court of Appeals for the First Circuit affirmed an award of attorney fees that greatly exceeded the statutory damages the music infringement plaintiff obtained. Spooner v. EEN Inc., 10-2393. Songwriter/recording artist Jason Spooner had sued over the unauthorized use of his song “Who Am I” in a TV skiing commercial. In an earlier phase of the case, the U.S. District Court for the District of Maine decided that Spooner's song and sound recording together constituted one “work” for the purpose of determining statutory damages. Spooner v. EEN Inc., 08-CV-262 (D.Me. 2010). The EEN media-production defendants offered Spooner a $20,000 settlement, which he declined; he settled with defendant Sugarloaf/USA ski resort for $30,000. The district court then awarded Spooner $40,000 in statutory damages ' minus the Sugarloaf settlement, resulting in a $10,000 net award ' and a permanent injunction against EEN. Spooner requested $175,714.30 in attorney fees under Sec. 505 of the Copyright Act. The district court awarded him $98,745.80, which EEN appealed.

The First Circuit described the Spooner case as “the litigation equivalent of hand-to-hand combat.” The appeals court then noted of EEN's appeal that “defendants' principal claim is that the plaintiff's request for fees reflects such a degree of extravagance that the only appropriate response to it was an outright denial of any fees.” But the appeals court went on to find: “The [district] court observed approvingly that the plaintiff had pared down his fee request before filing it, writing off more than 100 hours. ' It trimmed the request even further, winnowing out hours that it deemed 'readily attributable' to the plaintiff's claims against the Sugarloaf defendants. Similarly, it deleted hours relating to the plaintiff's quixotic endeavor to secure a pretrial attachment of [EEN's owner] property. It then adjusted the time spent to reflect the plaintiff's unsuccessful attempt to split his infringement claim into two pieces (one relating to composition and the other to recording), deducting time attributable to that failed initiative.”

The appeals court also considered that the district court “explained that the defendants had willfully infringed the plaintiff's copyright and, moreover, that the plaintiff had secured a permanent injunction, which 'may have more value ' than the statutory damage award'” and that, in any case, “[t]he law, however, does not demand strict proportionality between fees and damages.”