Ninth Circuit Orders Rehearing En Banc in Garcia v. Google "Innocence of Muslims" Case

It took awhile but today the Ninth Circuit ordered rehearing en banc of Garcia v. Google, the case involving an actress's claim of a copyright interest in her performance in the film "Innocence of Muslims" and her request for a preliminary injunction requiring Google to take down the film.

Currently, en banc argument in the appeal is scheduled for the week of December 15, 2014.

You can read about earlier proceedings in the Ninth Circuit here and here.

The case cite is Garcia v. Google, Inc., Appeal No. 12-57302 (9th Cir.).

Dispute Over Rights to "Zorro" Dismissed on Jurisdictional Grounds

A dispute over the rights to the nearly 100-year-old fictional character Zorro has been quietly dismissed on jurisdictional grounds by the Western District of Washington.

According to the complaint, the Zorro character first appeared in 1919 in a story titled "The Curse of Capistrano" by Johnston McCulley.  That story was adapted into "The Mask of Zorro" silent movie by Douglas Fairbanks, Sr. in 1920.

There doesn't appear to be any dispute that the copyrights in these two works--the 1919 story and the 1920 film--have expired and therefore those works have entered the public domain.  (In 2002, in another dispute between the parties before the Trademark Trial and Appeal Board, Zorro Productions, Inc. ("ZPI") admitted that the copyright terms for the 1919 story and the 1920 film had expired.)

In 1996, the plaintiff, Robert Cabell, authored the script for a musical-- "Z-The Musical of Zorro"--allegedly incorporating material from the 1919 story and the 1920 film as well as original material.  Cabell later licensed his musical to be produced at a festival in Germany in June 2013 and by a production company also based in Germany.  Plaintiff alleged that ZPI contacted representatives of the festival and the production company, claiming the rights to the Zorro character.

ZPI "claims to be the worldwide proprietor of the trademark 'Zorro' and to own numerous copyrights pertaining to 'Zorro'," according to the court.  The complaint alleges a number of trademark registrations that ZPI obtained for the "Zorro" mark.  It also alleges that ZPI holds a copyright interest in a 2005 book titled "Zorro" and that ZPI produced a musical based on the book that plaintiff alleges incorporates original material from his 1996 script.

Cabell filed suit against ZPI (and others) in March 2013, alleging, in part, copyright infringement with respect to ZPI's "Zorro" musical and the book on which it was based.  He also sought a declaration that his musical does not infringe on any copyright or trademark interest of ZPI and requested cancellation of certain trademark registrations for "Zorro" obtained by ZPI.

Defendants moved to dismiss plaintiff's complaint alleging, among other things, a lack of personal jurisdiction.  The court granted the motion on October 21, 2014, leaving the interesting copyright/trademark issues unresolved.

The case cite is Cabell v. Zorro Prods., Inc., Case No. 2:13-cv-00449 (W.D. Wash. Oct. 21, 2014).

Court Doesn't Like the "Flavor" of Pizzeria's Trademark Claim

New York Pizzeria, Inc. ("NYPI") sued a number of defendants alleging, among other things (check out the court's opinion for a discussion of the other claims), that the defendants had "'infringed and/or diluted NYPI's protected trademark interest in the distinctive trademark flavor of its products.'"  NYPI alleged that its "'specially sourced branded ingredients and innovative preparation and preservation techniques contribute[d] to the distinctive flavor'" of its products.

On defendants' motion to dismiss, the district court did "not doubt that flavor can 'carry meaning,' but that meaning entitles a mark to trademark protection only if it distinguishes the source of a product."  The court however did doubt "that flavors can ever be inherently distinctive [and therefore entitled to trademark protection], because they do not 'automatically' suggest a product's source."

Even setting aside the question whether flavor can be inherently distinctive for trademark purposes, the court found that NYPI's flavor-based trademark claim ran afoul of the functionality doctrine, under which functional product features are not protectable.  "The flavor of food undoubtedly affects its quality," the court stated, "and is therefore a functional element of the product."

The court therefore dismissed NYPI's flavor-based trademark claim although other of its claims survived.

The case cite is New York Pizzeria, Inc. v. Syal, Case No. 3:13-cv-00335 (S.D. Tex. Oct. 20, 2014).

Court Shoots Down Publicity Rights Claim of "Notorious Public Figure" Manuel Noriega

In July 2014, Manuel Noriega filed suit against Activision Blizzard, Inc. alleging, in part, violation of his publicity rights in connection with the Noriega character appearing in Activision’s video game Call of Duty: Black Ops II.

Activision moved to dismiss Noriega’s claims under California’s anti-SLAPP statute, arguing in part that “[n]either California law nor the First Amendment allows historical figures to censor their depiction in history under the guise of a publicity claim.”  Activision further argued that any purported publicity rights claim Noriega had could not survive the “transformative use” test employed by California courts.

The court prefaced its discussion of the transformative use test to Noriega's claims by recognizing the tension between rights of publicity and the right of free expression under the First Amendment:

Contemporary events, symbols and people are regularly used in fictional works. . . .  The right of publicity derived from public prominence does not confer a shield to ward off caricature, parody and satire.  Rather, prominence invites creative comment.  Surely, the range of free expression would be meaningfully reduced if prominent persons in the present and recent past were forbidden topics for the imaginations of authors of fiction.

(quoting Guglielmi v. Spelling-Goldberg Prods., 25 Cal. 3d 860, 869 (1979) (Bird, J., concurring)).

Turning to the case before it, the court acknowledged that all agreed that Activision's video game constituted protected speech.  The only remaining issue for the anti-SLAPP analysis then was whether Noriega could demonstrate a probability of prevailing on his claims, which the court concluded he could not.

After outlining the uncontroverted evidence that “conclusively show[ed] that Noriega is a notorious public figure,” the court concluded that the “complex and multi-faceted game is a product of defendants’ own expression, with de minimis use of Noriega’s likeness” and that the “marketability and economic value of the [game] comes not from Noriega, but from the creativity, skill and reputation of defendants.”  Activision's use of Noriega's likeness was therefore transformative and Activision's First Amendment right of free expression thus outweighed Noriega's right of publicity.

The court thus dismissed with prejudice Noriega’s complaint against Activision.

The case cite is Noriega v. Activision Blizzard, Inc., Case No. BC551747 (Cal. Super. Ct. Oct. 27, 2014).

Court: California Not the Proper Venue for John Wayne-Duke University Trademark Dispute

This dispute between John Wayne Enterprises, LLC ("JWE") (a California entity) and Duke University arose from JWE's attempt to register "Duke" as a trademark in connection with alcoholic beverages.  In July 2014, JWE brought this action against Duke in federal court in California seeking a determination that its registration and use of the marks are not likely to cause confusion with, and do not dilute, Duke's valid trademarks.

Duke moved to dismiss the action in August 2014, asserting that the court could not exercise personal jurisdiction over it as a nonresident defendant and that the Central District of California was an improper venue for the case.

Although the court noted that "JWE may have a compelling argument against the scope of Duke's trademarks," (an interesting statement considering the court's ultimate conclusion) it concluded that it was not the appropriate court to address that issue.

Although Duke was aware of JWE's presence in California and therefore knew its opposition to JWE's trademark registration application would be felt in California, the court concluded that JWE had failed to demonstrate that Duke had purposefully directed its activities at California such that it would be appropriate to exercise personal jurisdiction over Duke.  For similar reasons, the court concluded that the Central District of California was the improper venue for the dispute.

The court therefore dismissed JWE's complaint without prejudice, thereby leaving open the possibility of filing suit in another jurisdiction.

The case cite is John Wayne Enters., LLC v. Duke Univ., Case No. 8:14-cv-01020 (C.D. Cal. Sept. 30, 2014).

SDNY Concludes That ReDigi Corporate Officers May Be Held Liable for ReDigi's Copyright Infringement

Back in January 2012, Capitol Records filed a copyright infringement suit in the Southern District of New York against ReDigi Inc., which offered an online service allowing users to buy and sell digital music lawfully purchased from iTunes.  I covered the case when it was originally filed (original post found here) and when the district court denied Capitol's request for a preliminary injunction (post found here).

In March 2013, the district court granted Capitol's summary judgment motion on its claims against ReDigi for direct, contributory, and vicarious infringement of Capitol's distribution and reproduction rights but found that issues remained as to Capitol's performance and display rights, ReDigi's secondary infringement of Capitol's common law copyrights, and damages, injunctive relief, and attorneys' fees.

At the same time, the district court denied ReDigi's summary judgment motion, including, in part, rejecting ReDigi's reliance on the first sale doctrine as a defense to Capitol's copyright infringement claim.  I discussed in more detail the district court's reasons for rejecting ReDigi's first sale defense in my article "The First Sale Doctrine in a Digital World?" published in The Copyright & New Media Law newsletter, volume 17, issue 4 in 2013, but the district court's March 2013 summary judgment order can be found here

The case is still wending its slow way through the system and on September 2, the district court entered an order that this time denied the motion filed by the founding co-owners of ReDigi who served as the company's chief executive officer and chief technology officer seeking to dismiss Capitol's first amended complaint that sought to hold them jointly and severally liable for ReDigi's infringing activities.

The district court concluded that Capitol's complaint contained sufficient allegations to make the individual corporate officers jointly and severally liable for ReDigi's infringing activities, specifically quoting one paragraph of the complaint alleging that:

[the Individual Defendants] personally conceived of the infringing business model and technology at issue in this case, were the ultimate decision makers concerning the development and implementation of [the] infringing activity [described in previous paragraphs] and directed and approved all key aspects of ReDigi's activities found . . . to infringe Capitol's copyrights.

Although the district court noted that the complaint "could certainly have provided more detail with respect to the individual actions of each Defendant," it nonetheless found that the complaint was sufficient, "if barely so," to put the defendants on notice of the conduct they are alleged to have engaged in.

The district court thus denied the individual defendants' motion to dismiss Capitol's first amended complaint.

The case cite is Capitol Records LLC v. ReDigi Inc., Case No. 1:12-cv-00095-RJS (S.D.N.Y. Sept. 2, 2014).

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UPDATE: Seventh Circuit Rejects Trademark Claim Over Name of Fictional Software in "The Dark Knight Rises"

This case pitted Fortres Grand, seller of software under the mark "Clean Slate," against Warner Bros. which, in 2012, released the last Batman film, The Dark Knight Rises.  The film included references to a software program known as "the clean slate," which Catwoman is told is capable of erasing all traces of her criminal past from any database on earth.

Fortres Grand sued Warner Bros. alleging trademark infringement over the use of "clean slate" in reference to the fictional software in the film.  In May 2013, the district court dismissed Fortres Grand's claims, concluding both that it had failed to allege a plausible theory of consumer confusion with respect to the parties' respective uses of "clean slate" and that the First Amendment protected Warner Bros.' use of the words.  You can find a discussion of the district court's decision, along with a copy of the opinion, here.

On Fortres Grand's appeal, the Seventh Circuit agreed with the district court on the consumer confusion issue, ultimately concluding that even "[a]ssuming all Fortres Grand's . . . allegations are true, its reverse confusion allegation--that consumers may mistakenly think Warner Bros. is the source of Fortres Grand's software--is still 'too implausible to support costly litigation.'"  The Seventh Circuit thus affirmed the dismissal of Fortres Grand's claims, declining to reach the question whether Warner Bros.' use of the words "clean slate" was protected by the First Amendment.

The case cite is Fortres Grand Corp. v. Warner Bros. Entm't Inc., Appeal No. 13-2337 (7th Cir. Aug. 14, 2014).

Second Circuit Allows Dispute Over Harlequin E-Book Royalties to Continue

Plaintiffs--authors of romance novels published by Harlequin--sued Harlequin Enterprises and its related entities alleging that Harlequin paid them artificially low royalties on sales of digitized versions of their books.

On Harlequin's motion to dismiss, the Southern District of New York dismissed the authors' complaint for failure to state claims.  Although it affirmed the dismissal in part, the Second Circuit gave the authors' case a second life, concluding that they had sufficiently plead a breach of the publishing agreements based on the theory that Harlequin had used an unreasonably low license fee to calculate the authors' e-book royalties.

In 1983, "for tax and related purposes," Harlequin Enterprises changed its structure and publishing agreements.  It registered a subsidiary, Harlequin Enterprises B.V. ("HEBV"), in Fribourg, Switzerland, and thereafter changed its publishing agreements to specify HEBV as the "publisher" and Harlequin Enterprises as a "related licensee."

Harlequin Enterprises took similar action in 1994, registering Harlequin Books S.A. ("HBSA"), a Swiss company, as HEBV's successor (referred to collectively as Harlequin Switzerland).  The publishing agreements then specified HBSA as the "publisher" while Harlequin Enterprises continued to be identified as a "related licensee."

Of particular relevance to the appeal, the publishing agreements contained two clauses covering the sale, license or distribution of the authors' works in other media.  One clause described how the authors' royalties would be calculated:

On all other rights exercised by Publisher or its Related Licensees [50%] of the Net Amount Received by Publisher for the license or sale of said rights.  The Net Amount Received for the exercise, sale or license of said rights by Publisher from a Related Licensee shall, in Publisher's estimate, be equivalent to the amount reasonably obtainable by Publisher from an Unrelated Licensee for the license or sale of the said rights.

The second clause stated:

If Publisher licenses, sublicenses or sells to an Unrelated Licensee any of the following rights to the Work anywhere in the world, in any language, Author's and Publisher's share of net amount received by Publisher for said license, sublicense or sale shall be apportioned as follows . . .

[Author's share] 50% [Publisher's Share] 50%.

Harlequin Enterprises informed the authors in 2011 that, under these clauses, their e-book royalties would be calculated based on the net amount Harlequin Switzerland received under the license it purportedly granted to Harlequin Enterprises to publish the e-books.  Harlequin Enterprises claimed that this net amount received by Harlequin Switzerland was 6-8% of the cover price of the e-books, which under the publishing contracts would entitle the authors to 3-4% of the cover price.

In their breach of contract claims based upon agency, assignment, and alter ego liability, the authors alleged that Harlequin Enterprises, rather than Harlequin Switzerland, should be considered the "publisher" under the publishing agreements for purposes of calculating royalties.  Doing so, the authors alleged, would entitled them to receive 50% of the amount Harlequin Enterprises received on e-books, which was alleged to be upwards of 50% of the cover price.  The Second Circuit affirmed the dismissal of these claims because the publishing agreements unambiguously identified Harlequin Switzerland as the "publisher" and Harlequin Enterprises as a "related licensee" for purposes of computing royalties.

But the Second Circuit reversed the dismissal of the authors' breach of contract claim alleging that the license fees paid by Harlequin Enterprises, a "related licensee," to Harlequin Switzerland did not comply with the publishing agreements, which required "that the net amount received from a related licensee be equivalent to the 'amount reasonably obtainable' from an unrelated licensee":

These allegations, that the amount of royalties they received were not equivalent to the amount reasonably obtainable from an unrelated licensee, nudged plaintiffs' claims across the line from conceivable to plausible.

The case cite is Keiler v. Harlequin Enters. Ltd., Appeal No. 13-1753-cv (2d Cir. May 1, 2014).

Federal Circuit Affirms Refusal to Register the Mark "Stop The Islamisation of America" on Disparagement Grounds

In February 2010, Pamela Geller and Robert B. Spencer sought to register the mark STOP THE ISLAMISATION (apparently sometimes spelled ISLAMIZATION) OF AMERICA in connection with "[p]roviding information regarding understanding and preventing terrorism."

The PTO examining attorney refused registration on the ground that the mark may be disparaging to American Muslims under Section 2(a) of the Lanham Act (15 U.S.C. Section 1052(a)).  On the applicants' appeal of the refusal, the Trademark Trial and Appeal Board affirmed the refusal finding that the term "Islamisation" had two likely meanings:

(1) the conversion or conformance to Islam (the religious meaning); and (2) a sectarianization of a political society through efforts to make [it] subject to Islamic law (the political meaning).

(All internal quotation marks and record cites omitted in this and all following quotes.)  Under both meanings of the term, the TTAB concluded that the mark may be disparaging to American Muslims.

With respect to the "religious meaning" of the term "Islamisation," the TTAB found the mark to be disparaging because "[t]he admonition in the mark to STOP sets a negative tone and signals that Islamization is undesirable and is something that must be brought to an end in America."  And the proposed use of the mark in connection with "understanding and preventing terrorism" created "a direct association of Islam and its followers with terrorism," the TTAB found.

With respect to the "political meaning" of the term, the TTAB found that the "suggestion that political Islamisation must be stop[ped] to prevent[] terrorism would be disparaging to a substantial composite of American Muslims."

On appeal from the TTAB's decision, applicants largely challenged the evidence relied upon by the TTAB and the appropriate meaning of the term "Islamisation" in the context of their application.  The Federal Circuit rejected those challenges, however, concluding that the evidence relied upon by the TTAB (which included essays and readers' comments posted on applicants' website) was appropriate and that its conclusions were supported by substantial evidence.

The Federal Circuit thus affirmed the TTAB's decision upholding the refusal to register the mark.

The case cite is In re Geller, Appeal No. 2013-1412 (Fed. Cir. May 13, 2014).

UPDATE: New Filings in Garcia v. Google, "Innocence of Muslims" Dispute

Garcia v. Google involves an actress's claim of a copyright interest in her acting performance in the controversial film "Innocence of Muslims" and her request for a preliminary injunction requiring Google to take down the film.  The actress's request for injunctive relief was denied in the district court but on appeal, a divided panel of the Ninth Circuit reversed that denial and ordered Google and YouTube to "remove immediately all or part of [the] film entitled 'Innocence of Muslims' from its platforms worldwide and to prevent further uploads."  You can read about the Ninth Circuit's decision here.

After the Ninth Circuit's decision, a judge of that court sua sponte requested a vote on whether to rehear en banc the panel's decision denying Google's request for a stay of the orders requiring it to take down the film.  The court thus directed the parties to file supplemental briefing limited to that issue.  The court's order can be found here.

The parties filed their respective supplemental briefing on March 12, 2014.  You can read the brief of the actress, Cindy Lee Garcia, here.  Google's briefing can be found here.  Although I haven't completed review of both briefs, one interesting item attached to Google's brief is a letter from the U.S. Copyright Office dated March 6, 2014, explaining why the office was refusing the actress's attempt to register a copyright in her individual performance in the film.

 

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