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You’re Getting Sued for What? An E&O Odyssey (Pt 13)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by “errors and omissions” (E&O) insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, on the contrary, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against producers and distributors for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

(I should note for regular readers of the Signal that the fact that we have published three installments in the “You’re Getting Sued for What? An E&O Odyssey” series in the last twenty-four hours is purely coincidental. It’s not our fault that so many interesting lawsuits have been filed recently. We swear.)

As reported by the National Post, a Montreal-based artist is suing the producer and broadcaster of the television series 30 Vies – on the basis that footage of a graffiti tag on a building which is incorporated into the opening credits of the series constitutes copyright infringement. The lawsuit evidently seeks $45,000 in damages on the basis that the producer and broadcaster, without permission from the artist, “forged, modified, mutilated and broadcast the work” for commercial purposes. As reported by the Post, “an image in which the tag appears below the show’s spray-painted title was reproduced on promotional billboards for the show’s first and second seasons.”

Although it is not perfectly clear from the news report, it appears that the artist in question is asserting not just an infringement of his copyright, but also infringement of his “moral right” to be protected against use of a work “in association with” a product so as to prejudice the artist’s reputation.

The extent to which graffiti needs to be “cleared” (i.e., the subject of a license or digitally smudged so as to be unrecognizable) for use in film and TV projects is a recurring one for producer’s counsel and giving advice to clients requires some consideration of the specific graffiti. As noted in the news report about the 30 Vies suit, it can be difficult to film in urban environments without catching at least some graffiti on-screen. The mere fact that the original painting of the graffiti might have been illegal is not a defence to a claim for infringement – it is not a condition for copyright protection that a work be “legal” (though a judge might be convinced to award only nominal or very low damages for infringement).

A more productive line for defending a copyright claim might be to force the platintiff to demonstrate that they are in fact the author and owner of the “artistic work” they are claiming has been infringed. Depending on the nature of the graffiti in question, it might be plausible to argue that the “work” lacks the requisite “originality” to warrant copyright protection (the more the graffiti is a mere “tag”, the less likely it will be to have the necessary originality). The viability of the “incidental inclusion” defence is contested, particularly in the context of dramatic productions, so it’s an open question whether it could plausibly be argued (see this post for further discussion of “incidental inclusion”). Another possibilty is to argue that whatever the use, it is de minimis and therefore not properly the subject of a legal claim – regrettably, Canadian courts have been less than forthcoming on the viability of de minimis defences in copyright actions so, again, this would be a somewhat novel approach (see this post for some further general discussion of the de minimis defence).

Of course, in the E&O context, both producers and insurers generally want to avoid the filing of a claim in the first place, rather than trying to strategize about how to defend against one which has already been filed. When it comes to graffiti, the only sure-fire way to avoid an E&O concern is to either entirely avoid filming it or to have the production’s art department create their own “graffiti” – though whether either of those options is entirely palatable will be left to the producer and their creative vision.

You’re Getting Sued for What? An E&O Odyssey (Pt 13)

You’re Getting Sued for What? An E&O Odyssey (Pt 12)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by “errors and omissions” (E&O) insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, on the contrary, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against producers and distributors for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

As reported by The Hollywood Reporter‘s entertainment law blog, Hollywood, Esq., the producers, distributors and broadcasters of the television series Southland are being sued by the family of a deceased individual whose autopsy photo is used in the opening credits montage of the show. The mother and daughter of the deceased individual claim that, as a result of the photo’s use, they have suffered “anxiety, anger, hopelessness, fear and distrust of authority” along with “physical and emotional discomfort, injury and damage,  apprehension, psychological trauma, loss of dignity, nightmares, loss of trust”.

The lawsuit raises an important practice point. Often when assessing whether the use of a photograph would infringe the rights of a third party, lawyers will focus on issues relating to the rights in the photograph: copyright in the photograph, copyright or trade-mark rights in any materials depicted in the photograph and personality rights attached to any individual depicted in the photograph. The lawsuit is a good reminder to also consider whether the use of the photograph could intersect with the rights of not only the people in the photograph, but with the rights of a third party: is the photograph being used in a way which could give rise to a defamation claim (e.g., a photograph of a person’s face is being shown to someone to see if they will identify the person depicted as having committed a crime) or to a more remote claim for trauma (such as that contemplated by the Southland lawsuit).

You’re Getting Sued for What? An E&O Odyssey (Pt 12)

You’re Getting Sued for What? An E&O Odyssey (Pt 11)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by “errors and omissions” (E&O) insurance.  The series aims to demonstrate that what might seem to a producer to be unjustified paranoia on the part of their lawyer is, on the contrary, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against producers and distributors for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

Giving E&O “clearance” advice is usually a mix of substantive legal analysis (“does the proposed inclusion of this famous person’s image in this movie violate their publicity rights?”), practical risk assessment (“this is a film which seventeen people will see – how is the famous person going to find out about it?”) and instinct (“that famous person has a reputation for aggressively protecting their interests”). Producers, their lawyers and the lawyers of the E&O insurer often engage in a bit of hemming and hawing about how to handle a particular situation, and the final decision can come down to a frank financial judgment: the deductible on your E&O policy is $25,000 – are you willing to pay that amount if someone files a claim just because you think that including this possibly-violative image is critical to the “artistic” merit of the project?

Over time, most entertainment lawyers develop a bit of a sixth sense about what is and what isn’t advisable when it comes to E&O clearance (e.g., anything involving Disney, Coca-Cola or the Elvis Presley estate should be authorized). Sometimes, though, things just come out of a clear blue sky:

Manuel Noriega sues over ‘Call of Duty’ video game

Yup. 80-year old imprisoned former Panamanian strongman Manuel Noriega has filed a lawsuit in Los Angeles County against the publishers of Call of Duty: Black Ops II, one of the most successful videogames of the last few years, on the basis that one of the “missions” in the game requires players to capture an on-screen villain depicted as Noriega. Based on news reports, the lawsuit appears to allege defamation and infringement of Noriega’s right of publicity.

One can just imagine the discussions which took place about whether there was any risk in including Noriega’s image in the game (“dude, he’s 80 years old and he’s in prison in Panama – what’s he gonna do, sue us?”). For what it’s worth, I think an awful lot of entertainment lawyers I know would have counselled their client that there was risk in using Noriega’s image, but it was probably a pretty low practical risk. There are certainly defences which can (and will) be raised against the lawsuit (free speech being the most obvious; truth, lack of malice or fair comment as a defence to the defamation claim; the untenable nature of Noriega’s claim to be entitled to a share of the profits) – but it’s always best to avoid having to be dragged into court in the first place (which would certainly be the preference of the defendant’s insurer). Ultimately, just because a risk is awfully low doesn’t mean it doesn’t exist. I’m looking forward to dragging out the “Manuel Noriega sued for using his image” story in future discussions with clients.

You’re Getting Sued for What? An E&O Odyssey (Pt 11)

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