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You’re Getting Sued for What? An E&O Odyssey (Pt 10)

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 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, in fact, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against film/TV producers 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 Hollywood, Esq., a model who appeared in a Revlon print ad in the early 1960s is suing the distributors of the TV series Mad Men in L.A. Superior Court because her image (taken from that print ad) is seen in the opening title sequence of the series. Gita Hall May is seeking unspecified damages “suffered as a result of the unauthorized use” of her likeness which “appears more prominently and directly than any other image in that sequence” (Successful Former Revlon Model Is Suing ‘Mad Men’).

You’re Getting Sued for What? An E&O Odyssey (Pt 10)

You’re Getting Sued for What? An E&O Odyssey (Pt 9)

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 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, in fact, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against film/TV producers 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.

We generally try to avoid editorial comments on lawsuits in this series of posts, but oy vey: as reported by Alex Ben Block at Hollywood, Esq., Sony Pictures Classics, distributors of the Woody Allen film Midnight in Paris, are being sued in US federal court for copyright infringement, trade-mark related claims and personality appropriate-based claims by the estate of William Faulkner for a verbal reference in the film.  As described by at The 1709 Blog:

In describing his experiences, Gil speaks the following lines: “The past is not dead. Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.” Apparently neither Sony nor its co-defendants had sought prior permission to use Faulkner’s original quote (“The past is never dead. It’s not even past.”)

The Hollywood Reporter has made available a copy of the filed statement of claim.

As Howard Knopf notes, with respect to the copyright infringement claim, Sony is being sued for “inaccurately and with attribution” “copying” nine words.  Perhaps optimistically (but certainly normatively correctly), Knopf goes on to opine that,

“It should go without saying that any Canadian or UK court would toss this as “insubstantial copying”, without the need to even look at fair dealing. It’s two short sentences, and nine words. Almost nobody would consider the quotation involved here to be “substantial” or more than “de minimis…”

One would hope.

Alas, when it comes to E&O insurance clearance and the risks that insurers bear, this demonstrates yet again that one can perhaps never view a potential claim as too remote.

You’re Getting Sued for What? An E&O Odyssey (Pt 9)

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art

Although a decision from the US 11th Circuit Court of Appeals has limited precedential value in Canadian courts, the decision in University of Alabama vs New Life Art, Inc. (filed June 11, 2012) (hat tip: Hollywood, Esq.) is useful for Canadian entertainment lawyers because it indicates the analytical framework which courts use in assessing whether infringement has occurred when a trade-mark is incorporated into an artistic work.  The case is particularly instructive for lawyers trying to provide guidance to clients who want to make use of trade-marked material (for example, a sports team jersey) in a different work (such as a movie).

The case involved artist Daniel A. Moore, who has built a reputation for creating realistic paintings depicting scenes from sporting events, with particular focus, relevant to this dispute, on scenes involving the University of Alabama football team (a sample of Mr. Moore’s work can be found here).  Moore’s paintings are sold, reproduced as prints (which are also sold) and reproduced on paraphenalia such as mugs and calendars.  Although the University and Moore had, for about a decade, entered into agreements relating to Moore’s work, for a much longer period of time Moore had been preparing his paintings without any involvement with, or permission from, the university.  As these things go, the University demanded that Moore stop executing his paintings without their permission – Moore refused, and the University sued Moore for, among other things, trade-mark infringement.

While the entire decision is interesting in its own right, the nub of the court’s conclusion is this:

“we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act [the US analogue of the Trade-marks Act (Canada)]” (pages 18-19 of the .pdf of the decision)

While US First Amendment jurisprudence does not map precisely onto Canadian freedom of expression analysis, the emphatic nature of the 11th Circuit’s decision is worth noting – and, as the court notes when citing a string of precedents, the danger of restricting free expression will factor heavily into a court’s decision when confronted with expressive materials (even materials which can be used in commerce and have a significant commercial component).  As the court states:

“Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully “weigh the public interest in free expression against the public interest in avoiding consumer confusion.” An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.” (citations omitted)(page 24 of the .pdf of the decision)

The primary elements in a successful defence to a claim of trade-mark infringement appear then to be that the use of the mark must have some artistic relevance to the underlying expressive work, unless there is an explicit attempt to mislead consumers as to source or content.

The decision in the University of Alabama case can be comfortably read with the recent Southern District of New York decision in the “Hangover: Part II” case where Louis Vuitton Malletier, S.A. sued Warner Bros. for trade-mark dilution because of a scene in the movie making use of counterfeit Louis Vuitton handbags.  (For earlier Signal coverage of the case, see here; for Hollywood, Esq.’s coverage, see here; and for LawLawLand’s coverage, see here.)  The court granted the defendant’s motion to dismiss the plaintiff’s claim because the use of a knock-off bag was “protected … because it has some artistic relevance to the Film and is not explicitly misleading”.

While it is worth stressing again that the cases noted above are US decisions and so would not be controlling in Canadian courts, it is also worth highlighting that claims for trade-mark infringement should not be viewed by producer’s counsel as open-and-shut cases.  Mere use of a trade-marked item in a new work will not automatically trigger liability – there are countervailing freedom of expression issues which should be taken into account.

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art

You’re Getting Sued for What? An E&O Odyssey (Pt 8)

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 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, in fact, well-founded paranoia.  These posts will point to actual lawsuits which have been filed against film/TV producers 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.

This installment draws on recent lawsuits emanating from the type of folks you generally do not want to mess with: biker gangs.

Eriq Gardner at Hollywood, Esq. reported that the Hells Angels Motorcycle Club has sued MTV “for infringing and diluting their skull-with-wings insignia” (Hells Angels Sue MTV for Allegedly Stealing Membership Insignia).  The lawsuit was evidently prompted by t-shirts worn by individuals who were filmed and appeared in episodes of the TV series Rob Dyrdek’s Fantasy Factor – the t-shirts bore a design which the Hells Angels evidently feel infringed their registered trade-marks.  (If you were wondering, yes, the Hells Angels Motorcycle Corporation also has registered trade-marks in Canada, one of which can be seen here.)

In a separate lawsuit, reported by Deadline Hollywood, a former gang member sued A&E and the production company for showing his picture during an episode of the series Gangland, allegedly prompting death threats and resultant anguish (Former Gang Member Takes History Channel’s ‘Gangland’ To Court).  The use of an unauthorized photo in the episode prompted the suit, which seeks at least $50,000 in damages.

You’re Getting Sued for What? An E&O Odyssey (Pt 8)

You’re Getting Sued for What? An E&O Odyssey (Pt 7)

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 E&O insurance, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  These posts will point to actual lawsuits which have been filed against film/TV producers 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.

Eriq Gardner at Hollywood, Esq. is reporting that visual artist Maya Hayuk is suing RCA Records and Sony Music over the inclusion of one of her works of art in a music video.  The lawsuit has been filed in Massachusetts federal court.  The work in question, entitled “Sunshine”, is a mural which appears to be painted on a wall in Brooklyn (this page has what purports to be a picture of the work, the picture apparently being a still from a different music video in which the work appeared).  The video in which the infringing copy appears, for a song called “Only Wanna Give It to You”, can be found here – the purportedly infringing depiction of “Sunshine” can be seen at around the 2:00 and 3:00 marks.

A few items to note about the lawsuit:

  • the mural only appears for an aggregate of about ten seconds in the clip, and does not appear to ever show up in its entirety in the video – the shots are all fairly tightly focused on the performers, with only portions of the mural viewable on the wall in the background
  • the mural is on the side of a building, viewable from the public sidewalk – it would be virtually impossible to film the building (at least from this particular angle) without depicting the mural

What might potential defences, under Canadian copyright law, be to such a claim?  One could try to argue that the “incidental inclusion” provision found in Section 30.7 of the Copyright Act (Canada) applies.  As I explained in detail in this post at IPilogue, that would be a difficult argument to succeed with: the section requires that the inclusion of the copyrighted work be both “incidental” (arguably met in this case) and “not deliberate” – which is almost certainly not the case here, since the director of the video clearly intended to shot the scene at the particular location with the mural in the background.  None of the “fair dealing” exceptions found in the Act would apply.  What about the fact the mural is in a “public place”?  Still not going to help us: Section 32.2 of the Act which allows the reproduction in a “cinematographic work” (which would include a music video) of a work that is “permanently situated in a public place or building” only applies to sculpture and works of “artistic craftsmanship” – and a mural is decidedly not a sculpture or a work of artistic craftsmanship.

The launching of the lawsuit offers a timely reminder for those conducting E&O clearance on a film clip: the inclusion of virtually any copyrighted work (or an identifiable portion thereof) should prompt an assessment of whether the depiction of the work has been properly licensed or whether a fair dealing or other exception to infringement might apply.

You’re Getting Sued for What? An E&O Odyssey (Pt 7)