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Video Game Resources

A couple of noteworthy recent publications relating to the Canadian video game industry:

Video Game Resources

Faulkner v Sony – A Dying Past, or A Glass Half Full

Almost a year ago, we noted (You’re Getting Sued for What? An E&O Odyssey (Pt 9)) that the owners of the late author William Faulkner’s intellectual property rights had sued Sony Pictures Classics for copyright infringement based on the inclusion of a line in the 2011 movie Midnight in Paris (“The past is not dead.  Actually, it’s not even past.”) which echoed a line (“The past is never dead.  It’s not even past.”) from Faulkner’s 1951 novel Requiem for a Nun. The case was noteworthy for any number of reasons, not least the evidently low threshold for “infringement” which can prompt some claims. In July 2013, the US District Court for the Northern District of Mississippi granted the defendant’s motion to dismiss the claim – a decision which does (or should) accord with a common sense approach to copyright law. That being said, while the court got to the correct result, it strikes me that they got there via the wrong reasons. (The decision also briefly considered, and rejected, trade-mark and “commercial misappropriation” claims – I am ignoring those for purposes of this post.)

I concede at the outset that the issue of “substantiality” in copyright law is complicated: it is difficult to draw bright-line rules which prescribe when a unit of “expression” is too small or short to warrant copyright protection. But, surely, a nine-word passage from a 250+ page novel falls on the wrong side of that line, wherever it is drawn. Courts (including Canadian courts) have historically stated that short phrases or statements are insufficiently “original” to warrant copyright protection – but then have also extended protection to some vanishingly small bits of expression.  Additionally, rather than saying that something is “too short” to garner protection, the conclusion is couched in the copyright-ese of “originality” to provide some analytical wiggle-room for situations where the qualitative importance of a single sentence or set of sentences outweighs the evident quantitative value (as might occur with poetry, for example). And that’s generally fine, but as I noted in this post at IP Osgoode (in the context of talking about copyright in titles) short bits of expression can be “so granular (and potentially consist of words that are simply component parts of speech and writing) that according protection to them would radically expand the field of protected works and correspondingly drastically reduce the ambit of the public domain”. According copyright protection to bits of expression is dangerous for creators: extend the protection too far and new creations of works suddenly becomes risky and correspondingly expensive.

The decision in Faulkner starts off promisingly: it seems that the court will dismiss the claim on the basis of the legal doctrine of de minimis non curat lex (“the law cares not for trifles”), which, in United States law, “is part of the established background of legal principles against which all enactments are adopted, and which all enactments (absent contrary indication) are deemed to accept”. Unfortunately, because of a lack of direct precedent in the Fifth Circuit about the application of the de minimis defence to assertions of copyright infringement, the court drops the de minimis analysis and subsumes it within the consideration of a broader “fair use” analysis. (Spoiler: paraphrasing nine words constitutes “fair use”.)

Without getting too het up about it, it’s ridiculous that a paraphrasing of nine words results in a court indulging in analytical expositions like the following:

The speaker, time, place, and purpose of the quote in these two works are diametrically dissimilar. Here, a weighty and somber admonition in a serious piece of literature set in the Deep South has been lifted to present day Paris, where a disgruntled fiancé, Gil, uses the phrase to bolster his cited precedent (that of Hemingway and Fitzgerald) in a comedic domestic argument with Inez. Moreover, the assertion that the past is not dead also bears literal meaning in Gil’s life, in which he transports to the 1920’s during the year 2011. It should go without saying that this use is highly distinguishable from an attorney imploring someone to accept responsibility for her  past, a past which, to some extent, inculpates her for the death of her child.Characters in both works use the quote for antithetical purposes of persuasion. On one hand is a serious attempt to save someone from the death penalty, and on the other is a fiancé trying to get a leg up in a fleeting domestic dispute.

To echo something from our initial post on this case: oy vey. In any event, to summarize the court’s analysis on fair use (Canadian readers are cautioned that the US fair use analysis is different from the Canadian fair dealing analysis):

  • Purpose and Character of the Use: transformative use + “transmogrification in medium” + miniscule amount use = fair use
  • Nature of Copyright Work: neutral
  • Substantiality of Portion Used: “both the qualitative and quantitative analyses to tip in favor of fair use … no substantial similarity exists”
  • Effect of Use on Market for Original Work: “highly doubtful that any relevant markets have been harmed by the use”

Conclusion: factors tip in favour of finding of fair use.

In the end, the court in Faulkner achieved the correct and fair result – regrettably, it took more legal effort than was necessary to get there. Producer’s counsel and insurer’s counsel should, to borrow a phrase, govern themselves accordingly.

Faulkner v Sony – A Dying Past, or A Glass Half Full

Wiping the Slate Clean: When Fake Movie Products Have Real-World Counterparts

Often when practicing entertainment law, particularly in Canada, attempts to analyze a particular situation run up against a road-block: there seems to be no caselaw covering the issue, and you’re stymied as to how to advise your client (beyond offering the most banal observations like “Well, there’s a risk”). Then, of course, the second-guessing begins: there must be some caselaw on this topic, and I’ve just missed it – right? It’s nice to have a decision like Fortres Grand Corporation v Warner Bros Entertainment (USDC, N.D. Indiana, 2013 WL 2156318) which covers multiple grounds: it provides some judicial guidance on a matter and confirms that you weren’t wrong when you couldn’t find any other decisions. Though the decision is an American one, and the analysis doesn’t perfectly map onto Canadian law, it is still a decision worth the attention of film & TV production lawyers.

The Fortres Grand case was brought to my attention by Friend of the Signal Gigi Morin, and contains the following statement, always music to a frustrated lawyer’s ears: “there is surprisingly little case law on the point”. The “point” in question in Fortres Grand is simple to describe (and in fact is so described by the authors of McCarthy on Trademarks and Unfair Competition): “Is it trademark infringement if a fictional company or product in a movie or television [show] bears the same name or brand as a real company or product?”

The dispute in the case arose from the following facts: the defendants produced and released a movie (The Dark Knight Rises) in which the characters use and refer to a software program called “clean slate” (occasionally referred to in the movie as “the clean slate”; the same program also appears on immersive promotional websites created in connection with the marketing of the movie); the plaintiffs manufacture and sell a software program also called “Clean Slate”, and they also enjoy a US federal trade-mark for the name; the plaintiffs argued that the activities of the defendant amounted to trade-mark infringement.

As set out by the court, a successful trade-mark infringement action requires demonstrating a “likelihood of confusion among consumers” as to the source of a product. Under US law, there are two prevailing approaches to arguing trade-mark infringement: “forward” confusion involves a junior user (i.e., second-in-time user) who tries to “capitalize on the senior user’s [i.e., first-in-time user] good will and established reputation by suggesting that his product comes from the same source as does the senior user’s product”; “reverse” confusion involves a junior user who is larger and has greater market penetration than the senior user attempting to “overwhelm” the senior user’s control of its mark and goodwill and attempts to confuse the public into believing that the senior user’s product comes from, is connected to or endorsed by the junior user. In Fortres Grand, the plaintiff argued that reverse confusion was occurring.

The court dismissed the action on a motion for summary judgment, based on an intuitively simple problem with the plaintiff’s case: the defendant did not actually have a “real” product which competed with the plaintiff’s product for consumer attention; the only “real” product which the defendants had was a movie – as the court describes it, “in analyzing the potential for consumer confusion in this case, one must compare Fortres Grand’s “Clean Slate” software to Warner Bros.’ real product – The Dark Knight Rises“. Once that comparison is made, it is incredibly difficult to prove consumer confusion, as demonstrated by the handful of cases which the Fortres Grand court cites:

  • Ocean Bio-Chem Inc. v Turner Network Television (741 FSupp 1546) – MOW in which a child dies from pollution caused by a fictional company called “Starbrite Batteries”; Star Brite Distributing Inc. sued on the theory that the movie’s use of its trade-mark created a likelihood of confusion; court rejected the claim
  • Davis v Walt Disney Co. (430 F3d 901) – MOW in which heroes battle a company called “Earth Protectors”; plaintiff had founded an environmental advocacy organization called “Earth Protector”; court rejected claim
  • Caterpillar v Walt Disney Co. (287 FSupp2nd 913) – plaintiff’s farm equipment was featured in movie “George of the Jungle 2”; court rejected claim, noting “it appear unlikely … that any consumer would be more likely to buy or watch [the movie] because of any mistaken belief that Caterpillar sponsored this movie”

I offer the following extensive quote from the decision, because the judge articulates the argument much better than I could [all emphasis is in the original]:

This would be an easy case if Warner Bros. had saturated the market by rolling out a huge, nationwide campaign for a new computer program called “Clean Slate”. That really would have been a classic, “worst case scenario” of reverse infringement. But of course Warner Bros. didn’t do anything of the sort. Instead, it merely released a fictional movie that happened to involve an entirely fictional software referred to descriptively as “clean slate”.

To state a claim for reverse confusion in this instance, Fortres Grand would have to plausibly allege one of two things: 1) consumers have been deceived into believing that the fictional “clean slate” software in the movie “emanates from, is connected to, or is sponsored by” Fortres Grand or 2) consumers have been deceived into believing that the film The Dark Knight Rises “emanates from, is connected to, or is sponsored by” Fortres Grand. … For entirely obvious reasons, neither of these is a plausible claim. First, no consumer – reasonable or otherwise – can believe the fictional “clean slate” software in the movie emanates from, is connected to, or is sponsored by Fortres Grand because the fictional software does not exist in reality. Any consumer going online or into a store looking to buy the “clean slate” software mentioned in The Dark Knight Rises would quickly find that they are unable to do so because it is not a real product.

Another way of understanding this point is to say that Warner Bros. is only using “clean slate” in a “non-trademark” way. In other words, the film’s use of the phrase “clean slate” is not “identifying the source” of the software product (because there is no real software product), nor is it really “identifying the source” of the film. …

Second, no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. Warner Bros. makes this point well: “Plaintiff is not in the motion picture business, and it would be absurd to think that customers buy tickets to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the Film with [the plaintiff’s] products”. As the Seventh Circuit recently put it in a similar context, the Complaint “does not allege that the use of [the trademark] has caused any confusion about the film’s source and any such allegation would be too implausible to support costly litigation.”

In addition to dismissing the plaintiff’s case for failing to pass muster on the “likelihood of confusion” test, the court held that Warner Bros. use of “clean slate” was protected by the US 1st Amendment: referring to the 2nd Circuit decision in Rogers v Grimaldi (875 F2d 994), the court notes that the Lanham Act (the US federal trademarks legislation) is inapplicable to artistic works if the defendant’s use of a mark in the artistic work is (1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work. The court in Fortres Grand held that the defendants satisfied both prongs of the test: the first step of the test involves a low threshold to clear (“the level of relevance merely must be above zero”), while the second step involves a high threshold (“explictly” misleading) – Warner Bros. easily met both steps.

While not directly applicable to the Canadian context, the Fortres Grand case offers guidance for film & TV production lawyers confronted with a script report which shows that their client’s project wants to make use of a fictional product whose name conflicts with a real world product.

Wiping the Slate Clean: When Fake Movie Products Have Real-World Counterparts

Enforceability of Depiction Releases Redux – MHR Board Game Design v CBC

Whatever else one might want to say about the CBC television series Dragons’ Den, this much is indisputable: no other television show in Canadian history has been as important for advancing the state of Canadian jurisprudence regarding the enforceability of depiction releases. In the most recent case, a lawyer who appeared on the show had his claim against the CBC dismissed on a motion for summary judgment. Depiction releases typically contain language which not only allows a producer to make use of footage and photographs of a TV show participant, but which also specifically precludes the participant from suing the producers or broadcasters of the show for any reason – one previously unsettled issue was the extent to which such language (which is generally provided to participants on a “take it or leave it” basis) would be enforced by the courts. The answer appears unambiguous: a properly drafted release will be fully enforced by the courts and there appears to be little or no ambit for an unhappy show participant to sue in the shadow of one – however, there may be some remaining glimmers of hope for unhappy TV show participants, discussed at the end of this post.

Over the last few years, Dragons’ Den has been the subject of multiple lawsuits filed by individuals who appeared on the show and who felt aggrieved at the manner in which they had been portrayed on-air. The first of these cases, which we previously discussed here and  here, was Turmel v CBC (Dragons’ Den) (see 2010 ONSC 5318 2011 ONSC 2400 and 2011 ONCA 519), wherein the Ontario Court of Appeal confirmed that a “depiction release” (sometimes referred to as a “participation release” or even just a “release”) signed by a participant in a “reality” TV show was enforceable against the participant to bar any claim from being advanced by the participant based on his unhappiness over his depiction (in Turmel, the plaintiff based his claim in both defamation and breach of contract).

At the end of June 2013, the Ontario courts had occasion to pronounce again on the enforceability of depiction releases, again in the context of Dragons’ Den. In the case of MHR Board Game Design Inc. v. Canadian Broadcasting Corporation, 2013 ONSC 4457, the court again held that a depiction release signed by a participant in the show was enforceable to prevent the plaintiff from advancing a claim against the broadcaster. (See news coverage here.) In MHR Board Game Design, however, the plaintiff was a lawyer and so the arguments advanced were a touch more subtle than those advanced in Turmel, and therefore worthy of additional attention.

In MHR Board Game Design, the nub of the plaintiff’s argument was that the recording of his presentation to the panel of investors who comprise the titular “Dragons” was edited in such a way as to be a complete misrepresentation of what had actually occurred – to speak colloquially, the plaintiff argued that what had been a relatively uneventful, if unsuccessful, pitch was deliberately and misleadingly edited to make it look like a fiasco had occurred. From the judgment:

[3] The essence of the plaintiffs’ claims are that the short segment of the original recording that was broadcast is not only a “complete misrepresentation” of the original recording, but that the defendant’s conduct amounted to “gross and reckless negligence, intentional misconduct, malice and bad faith”.  The plaintiffs have sued the defendant for breach of contract, defamation, breach of duty of care, and injurious falsehood.

[4] Mr. Ribeiro alleges that the specific conduct involved in this case is not within the exoneration clauses of the Consent and Release or alternatively, that it would be unconscionable or contrary to public policy to enforce its terms.  He recognizes that the Consent and Release affords a very broad editing discretion to the defendant but submits that, because the Release is so broad in its terms, the exercise of such editing discretion engages a corresponding implied duty to do so reasonably and in good faith.

The plaintiff advanced a number of arguments relating to the release. First, he argued that the release did not specifically name “defamation” as one of the precluded causes of action – the court dispatched that argument summarily, stating that the “broad language of the Consent and Release is clearly intended to cover all causes of action and it would be robbed of its effect if it did not cover negligence”.

The next argument put forth by the plaintiff was that the wording in the depiction release which stated that his “appearance, depiction and/or portrayal” in the program “may be disparaging, defamatory, embarrassing or of an otherwise unfavourable nature which may expose [him] to public ridicule, humiliation or condemnation” was only intended to extend to the reactions of the Dragons, and should not be interpreted so broadly that it permitted the producers to edit the footage in a manner which would give rise to such results. The court similarly rejected that argument: because the depiction release contained language giving the CBC “the sole discretion to edit, cut, alter, rearrange or revise the sales pitch for broadcasting” and because the plaintiff therefore  “acknowledged that the program as aired would be edited in the “sole discretion” of the Producer[, he] must have understood the release extended beyond the comments of the Dragons.”

As stated by the court:

The clauses in the contract relied upon by the defendant are clear and unambiguous.  The express terms provide exceptionally broad protection for the CBC against any liability to a participant on the program.  That protection is not hidden in fine print.  It is crystal clear.

…  It is hard to imagine any stronger language than the words found in paragraphs 9 and 27 of the Consent and Release.  … I find that the Consent and Release by its express and unambiguous terms releases the defendant from every claim identified in the Statement of Claim.

As a result of that conclusion, the depiction release functioned as “a complete bar” to the plaintiff’s claims, unless it would be “unconscionable or contrary to public policy to enforce the contract or if the defendant itself breached the contract”. The court next turned its attention to whether either of those conditions had been satisfied in the court at hand – and found that they had not been satisfied. The court found that, relying on the decision in Turmel, there were no grounds for deeming the depiction release to be unconscionable, and further that no evidence had been advanced that enforcing the contract would be contrary to public policy.

The plaintiff’s final redoubt was to argue that the depiction release had been breached by the defendants and therefore could not be relied upon them as a defence. In crafting such an argument, the plaintiff was forced to acknowledge that, per the editing language noted above, there did not seem to be any express limitation on the latitude afforded to the CBC regarding editing. Instead, the plaintiff argued, the depiction release contained an “implied duty of good faith” when editing the footage – the court rejected this for a lack of evidence:

However, the evidence fails to establish any breach of the contract by the defendant.  First, even assuming an implied duty can be read into the contract, it is not self evident that the broadcast segment actually constituted a misrepresentation of Mr. Ribeiro’s sales pitch. Though the Dragons expressed interest in the game itself and enjoyed playing it, it was at the same time clear that they were unwilling to invest in its commercial viability.  Second, even assuming that the broadcast segment somehow distorted the nature of what transpired during the sales pitch, there is no evidence whatsoever to support Mr. Ribeiro’s allegation that the editing was done maliciously or recklessly.  In the final analysis there is simply no evidence to support the bald allegation of a lack of good faith in the editing exercise.

All of the above being said, while the enforceability of depiction releases seems to be relatively open-and-shut, there remain some ambiguities at the margins. It seems that the court has left open the possibility that if the plaintiff’s evidence had demonstrated that the editing constituted a “misrepresentation” of what had happened and/or that the editing had been done “maliciously or recklessly”, then there might be some scope for finding that there had been a breach of an implied covenant of good faith – however, there remains a major hurdle for a plaintiff wishing to avail themselves of that argument: it would have to be proven that the depiction release actually did contain an implied covenant of good faith. The other remaining tendril of hope is a successful argument that the enforcement of the depiction release would be contrary to public policy – the court held that the enforcement of the Dragons’ Den depiction release would not be contrary to public policy, but that seemed to be largely because the plaintiff had not advanced any arguments on that point (of course, it’s not clear that there are any cogent arguments that enforcing a depiction release could be contrary to public policy, but lawyers are a clever bunch…).

Enforceability of Depiction Releases Redux – MHR Board Game Design v CBC

Who’s Got the Look? Pelchat c Zone 3 inc. et al.

For reasons which elude me, the Quebec courts get all the interesting entertainment law disputes in Canada (see also: Robinson v Films Cinar Inc., for which we anxiously await the Supreme Court of Canada’s decision). Case in point: Pelchat c. Zone 3 inc., 2013 QCCS 78. (Full disclosure: Heenan Blaikie acted for the defendants in this matter.) (Fuller disclosure: because the decision is in French, and my French-language reading skills are rudimentary (at best), my description of the court’s reasons might be a bit off – corrections of my translations and descriptions are most welcome. In addition to struggling through parts of the decision on my own, I have relied on the summaries provided by others, such as Sarah D. Pinsonnault.)

In this recent decision of the Quebec Superior Court, the plaintiff, a Mr. Pelchat, asserted that the defendants had infringed copyright in the plaintiff’s concept/format/idea for a television series based on “fashion”, “beauty transformations” or “makeovers”. Beginning in the late 1980s, Mr. Pelchat had created and appeared in a series of television programs entitled “Look”. That television series was discontinued, though the plaintiff continued to make television appearances on other shows, usually speaking as an authority about matters relating to beauty and fashion.

Beginning in 2002, the defendants produced a “makeover” television series entitled “Métamorphose”, a show which was aired until 2008. In 2005, the plaintiff contacted some of the defendants and asserted that “Métamorphose” infringed his copyright in “Look”. There was no assertion that “Métamorphose” contained any footage from “Look”, rather the plaintiff was basing his action on the notion that the more recent show had copied certain “elements” of his earlier show.

Entertainment lawyers and copyright lawyers will at this point begin to get a hint of where this is going: this raises the question of the extent to which a “concept” or “format” for an audio-visual project is protected or protectible by means of copyright law. Quebec courts are a hotbed for this sort of analysis in Canadian law: cases such as Arbique v Gabriele ([1998] AC No. 3794 (QSC), aff’d [2003] JQ No. 85 (QCA)), Productions Avanti Cine-Video c. Favreau ((1999), 1 CPR (4th) 129 (QCA)) and Cummings v Canwest (2005 CanLII 17671 (QCCS), aff’d 2007 QCCA 338) all address the matter. The decision in Pelchat is consistent with the decisions in those earlier cases.

The position of the defendants in Pelchat was relatively straight-forward: the plaintiff could claim no copyright in the “idea” of a show about fashion, beauty and/or make-overs; and to the extent, if any, they had “copied” anything from the plaintiff’s shows, it was not expression protected by copyright. The court agreed: in comparing the “overall expression” of the two shows, using the perspective of the “ordinary, reasonable person to whom the work is directed”, there were insufficient commonalities to ground a finding that the defendants had copied a substantial part of a protected work. In coming to that conclusion, the court assessed matters such as “target audience, specific themes and their development, structure, dialogue, ambiance, settings/stages, rhythm, sequences, characters”, and found that the only real similarity between the two shows was a shared concern with the notions of beauty and fashion; even the concept of make-overs/transformations was handled very differently as between the two shows.  Whereas the “Look” shows focused on glamour and sponsors, giving the actual “make-over” relatively little attention, “Métamorphose” devoted its attention almost exclusively to the make-over process itself, and focused on the particular individual who was the subject of the make-over. In a rather nice turn of phrase, Justice Payette observed (echoing an observation made in Cummings) that when he compared the shows it was not that he was looking at two horses of a different colour, he wasn’t even looking at two horses (see para. 172 of the Pelchat decision).

In addition to the lack of substantial similarity between the two shows (because of a lack of protectible expression on the part of the plaintiff), the court also concluded that the defendants had independently created “Métamorphose” and had not even seen “Look” – hence there was no “copying” in two senses. The decision is also noteworthy for its treatment of the plaintiff’s and defendant’s expert witnesses: the court held that no expert evidence was required to enable the court to compare the two shows (except on the narrow point of how shows like “Look” and “Métamorphose” would be “programmed” by a broadcaster in an effort to attract audiences).

In short, then, the plaintiff was not able to succeed because the elements of his show in which he claimed copyright and which he claimed had been copied by the defendants were not capable of being protected by copyright. Only if the ambit of copyright were expanded so broadly as to include nebulous “ideas” and “concepts” would it have assisted the plaintiff.

For those interested in further details on the concepts discussed in this post, see my earlier articles “‘I’ve Got This Great Idea for a Show’ – Copyright Protection for Television Show and Motion Picture Concepts and Proposals” (17 IPJ 189 (2004)) and “Sweating the Details: Clarifying Protection for Film and TV Concepts and Formats” (OBA Entertainment, Media and Communications Law Section Newsletter, vol. 19, no. 2 (February 2010)).

Who’s Got the Look? Pelchat c Zone 3 inc. et al.