Bit Parts

The U.S. Court of Appeals for the Seventh Circuit took a poke at the “transformative use” defense in copyright infringement cases in a suit over a t-shirt that makes fun of Madison, WI, mayor Paul Soglin. Kienitz v. Sconnie Nation LLC. Apparel company Sconnie Nation had used an unlicensed image of a photo of Soglin taken by plaintiff Michael Kienitz. The Seventh Circuit affirmed the district court's fair use finding by noting that what the disputed t-shirt used “besides a hint of Soglin's smile, is the outline of his face.” But the appeals court also noted: “The Second Circuit has run with the suggestion and concluded that 'transformative use' [under which a defendant claims it made a fair use by transforming the plaintiff's raw material] is enough to bring a modified copy within the scope of” of the Copyright Act's four-factor fair use test in 17 U.S.C. '107. The Seventh Circuit said it was “skeptical” of the transformative use defense, which isn't specifically named in '107, “because asking exclusively whether something is 'transformative' not only replaces the list in '107 but also could override 17 U.S.C. '106(2), which protects derivative works.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.

California Right of Publicity Claims Can Be Assigned

The California Court of Appeal, Second Appellate District, decided that a right of publicity claim can be assigned. Timed Out LLC v. Youabian Inc., B242820. Two models had assigned their California common-law misappropriation and statutory right-of-publicity claims to Time Out after the models discovered that Youabian was allegedly using their images on its website to advertise the company's cosmetic medical services. After Timed Out filed suit, the defendants moved for a judgment on the pleadings on the ground that the claims couldn't be assigned because they were personal to the models. The Los Angeles Superior Court then dismissed the case. Reversing, the court of appeal observed: “Plaintiff seeks to recover only pecuniary damages for Defendants' alleged commercial misappropriation of the Models' images. Those damages are described in the complaint as the 'profits or gross revenues' Defendants received as a result of the unauthorized use of the Models' images, the usurpation of the Models rights to commercially exploit their images, and the dilution of the commercial value of the Models' likenesses. The complaint does not allege emotional distress or disturbance to the Models' peace of mind, nor does Plaintiff seek damages for hurt feelings or injury to the Models' reputation.”

Invasion of Privacy Suit Against Greenberg Glusker Law Firm Found Time-Barred

The California Court of Appeal, Second Appellate District, ruled that writer/director Bo Zenga waited too long to file an invasion of privacy claim against the entertainment firm Greenberg Glusker Fields Claman & Machtinger. Zenga v. Greenberg Glusker Fields Claman & Machtinger, B248318. In May 2006, Zenga had added Greenberg Glusker as a defendant to a complaint he filed in Los Angeles Superior Court over the wiretapping of his phone during a separate production partnership suit he had launched against Brad Grey in 2000 over the film Scary Movie. (The trial judge granted a nonsuit in favor of Grey in the partnership litigation.) During the Scary Movie suit, Grey and his lawyers Greenberg Glusker hired private investor Anthony Pellicano, who tapped Zenga's phone and later was convicted by a federal jury of wiretapping, racketeering and wire fraud. When Zenga sued Greenberg Glusker, the law firm raised a statute of limitations defense by arguing that the latest that Zenga's invasion of privacy allegation accrued was the first half of 2004, so that his May 2006 complaint was time-barred. On appeal, Zenga argued that he didn't have actual knowledge of grounds for suing Greenberg Glusker until within a year of the complaint. But affirming the superior court, the court of appeal noted, in an unpublished opinion, that Zenga had a subjective suspicion “long before mid-2005, that his privacy had been invaded, and that the instrumentality of the invasion was wiretapping. ' Zenga knew, during the time of the Scary Movie litigation, that Greenberg and Grey had retained Pellicano. Zenga's attorney 'wondered if wiretapping was going on' during the Scary Movie litigation, and 'took steps to determine whether there was a possibility that some unlawful wiretapping was going on' at that time. ' Zenga had multiple conversations with different people during 2001 about their suspicions that Pellicano had wiretapped their telephones.”

Whither the Transformative Use Defense in Copyright Infringement Cases?

The U.S. Court of Appeals for the Seventh Circuit took a poke at the “transformative use” defense in copyright infringement cases in a suit over a t-shirt that makes fun of Madison, WI, mayor Paul Soglin. Kienitz v. Sconnie Nation LLC. Apparel company Sconnie Nation had used an unlicensed image of a photo of Soglin taken by plaintiff Michael Kienitz. The Seventh Circuit affirmed the district court's fair use finding by noting that what the disputed t-shirt used “besides a hint of Soglin's smile, is the outline of his face.” But the appeals court also noted: “The Second Circuit has run with the suggestion and concluded that 'transformative use' [under which a defendant claims it made a fair use by transforming the plaintiff's raw material] is enough to bring a modified copy within the scope of” of the Copyright Act's four-factor fair use test in 17 U.S.C. '107. The Seventh Circuit said it was “skeptical” of the transformative use defense, which isn't specifically named in '107, “because asking exclusively whether something is 'transformative' not only replaces the list in '107 but also could override 17 U.S.C. '106(2), which protects derivative works.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.