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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Michael Jordan Defeats Supermarket's First Amendment Defense in Dispute Over Congratulatory Ad

In September 2009, Michael Jordan was inducted into the Naismith Memorial Basketball Hall of Fame, at which time Sports Illustrated produced a special commemorative issue of Sports Illustrated Presents devoted exclusively to his legendary career.  Jewel Food Stores--the operator of 175 supermarkets in and around Chicago--was offered and accepted free advertising space in the special issue in exchange for agreeing to stock the magazine.

Jewel's full-page ad appeared on the inside back cover of the issue and included a photo of a pair of basketball shoes bearing Jordan's number 23, with text appearing above congratulating Jordan on his accomplishments and incorporating Jewel's slogan, followed by Jewel's logo in large type (the Seventh Circuit's opinion includes a picture of the ad).

Jordan sued Jewel for, among other claims, violations of the Illinois Right of Publicity Act and the Lanham Act, all based on the allegation that Jewel had misappropriated his identity for its commercial benefit.  He sought $5 million in damages plus punitive and treble damages.

Both parties moved for summary judgment:  Jewel claimed that the ad was noncommercial speech protected by the First Amendment; Jordan claimed the ad was a commercial use of his identity.  The district court concluded that Jewel's ad was fully protected noncommercial speech and therefore entered judgment for Jewel on all of Jordan's claims.

Although it characterized the district court's decision as "thoughtful," the Seventh Circuit nonetheless held that the court had erred in concluding that Jewel's ad constituted fully protected noncommercial speech and therefore reversed on that basis.

Before reaching the substance of the appeal, the Seventh Circuit discussed one issue of law that the parties' agreement allowed the court to avoid resolving.  The parties apparently agreed with the proposition that the First Amendment precluded application of the laws upon which Jordan's claims were based to any noncommercial speech as defined in the constitutional sense, thereby providing a complete constitutional defense.  But the law on that issue is "considerably more complex," the Seventh Circuit commented, and it was "far from clear that Jordan's trademark and right-of-publicity claims fail without further ado" even if Jewel's ad constituted noncommercial speech.  Nonetheless, because the parties had agreed otherwise, that issue was left for another day.

Moving on to the central issue, the Seventh Circuit discussed the varying definitions or descriptions of "commercial speech," including "speech that proposes a commercial transaction."  But "commercial speech" is not limited to speech that falls within that narrow definition; rather, speech can still be characterized as "commercial" if it contains both commercial and noncommercial elements.  In such instances, the court identified three non-exclusive considerations:  whether "(1) the speech is an advertisement; (2) the speech refers to a specific product; and (3) the speaker has an economic motivation for the speech."

Applying these considerations to Jewel's ad, the Seventh Circuit rejected Jewel's argument that the ad wasn't commercial speech because it didn't propose any commercial transaction.  Rather, the text of the ad must be considered in its context as well as the context of modern commercial advertising:

We know from common experience that commercial advertising occupies diverse media, draws on a limitless array of imaginative techniques, and is often supported by sophisticated marketing research.  It is highly creative, sometimes abstract, and frequently relies on subtle cues. . . .  An advertisement is no less "commercial" because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service. . . .  Very often the commercial message is general and implicit rather than specific and explicit.

Such was true with Jewel's ad, the Seventh Circuit concluded, because it sought both to congratulate Jordan and promote Jewel's supermarkets.  The latter purpose was demonstrated by the prominent use of Jewel's logo in the center of the ad in type larger than any other on the page, and the explicit incorporation of Jewel's slogan ("just around the corner") into the text of the congratulatory message:

In short, the ad's commercial nature is readily apparent.  It may be generic and implicit, but it is nonetheless clear.  The ad is a form of image advertising aimed at promoting goodwill for the [Jewel] brand by exploiting public affection for Jordan at an auspicious moment in his career.

Finally, the Seventh Circuit clarified the "inextricably intertwined" doctrine:

Properly understood, . . . the . . . doctrine applies only when it is legally or practically impossible for the speaker to separate out the commercial and noncommercial elements of his speech.  In that situation the package as a whole gets the benefit of the higher standard of scrutiny applicable to noncommercial speech.  But simply combining commercial and noncommercial elements in a single presentation does not transform the whole into noncommercial speech.

So clarified, the doctrine did not apply to Jewel's ad and Jewel's constitutional defense to Jordan's claims was defeated.

The case cite is Jordan v. Jewel Food Stores, Inc., Appeal No. 12-1992 (7th Cir. Feb. 19, 2014).

Ninth Circuit: No Presumption of Irreparable Harm For Preliminary Injunctions in the Trademark Context & No Cause of Action for Contributory Cybersquatting Under the ACPA

As I slowly work through a backlog of cases, there are two trademark related cases from the Ninth Circuit in the not-too-distant past that are worth at least brief mentions.

Herb Reed Enters., LLC v. Florida Entm't Mgmt., Inc., Appeal No. 12-16868 (9th Cir. Dec. 2, 2013):

The first case involved a dispute over the use of "The Platters" name belonging to the well-known musical group of the 1950s.  At issue in the Ninth Circuit appeal was the district court's grant of a preliminary injunction to one of the parties claiming ownership of "The Platters" mark.

The Ninth Circuit addressed a number of issues relating to the grant of the preliminary injunction but only one was an issue of first impression in the circuit, namely, whether a court can presume a likelihood of irreparable harm when a plaintiff establishes a likelihood of success on the merits of its trademark claim.

Under the Ninth Circuit's previous rule, "'irreparable injury [could] be presumed from a showing of likelihood of success on the merits of a trademark infringement claim.'"  But in light of two Supreme Court decisions issued after adoption of that rule--eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) and Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008)--the Ninth Circuit held that the rule no longer applies and a plaintiff must instead establish the likelihood of irreparable harm when seeking preliminary injunctive relief in the trademark context.

 

Petroliam Nasional Berhad v. GoDaddy.com, Inc., Appeal No. 12-15584 (9th Cir. Dec. 4, 2013):

 In the second case, the Ninth Circuit answered the question whether the Anticybersquatting Consumer Protection Act ("ACPA") recognized a claim for contributory cybersquatting.  Looking to the statutory language and the purpose of the ACPA, the Ninth Circuit held that a cause of action for contributory cybersquatting could not be read into the statute.

First, the Ninth Circuit concluded that the plain text of the ACPA did not support the creation of a cause of action for contributory cybersquatting because the text limited civil liability for cybersquatting to those who, with "bad faith intent to profit" from a protected mark, register, traffic in, or use a domain name.  As a result:

[e]xtending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.

Second, the Ninth Circuit rejected the argument that Congress incorporated the common law of trademark, including contributory infringement, into the ACPA, and therefore rejected previous cases that had relied on such reasoning to conclude that a cause of action for contributory cybersquatting existed.  One such case specifically cited by the Ninth Circuit is from the Western District of Washington, Microsoft Corp. v. Shah.  You can read the district court's opinion discussing that issue here.  (The case was dismissed with prejudice pursuant to the parties' stipulation in July 2011, apparently without any further substantive motions or decisions on the contributory cybersquatting claim.)

Specifically, the Ninth Circuit stated that the ACPA was not the result of a codification of the common law but rather created a new statutory cause of action to address the new problem of cybersquatting.  Therefore, the court declined to infer a theory of contributory cybersquatting into the ACPA based on the common law of trademarks.

Finally, the Ninth Circuit concluded that recognizing a cause of action for contributory cybersquatting would not further the specific problem Congress sought to fix in the ACPA, namely, the bad faith and abusive registration of marks as domain names.  The ACPA was narrowly tailored to fix this problem by limiting those who can be liable for cybersquatting, including imposing a bad faith requirement and a narrow definition of those who "use" a domain name.  As a result, imposing secondary liability on domain name registrars would undermine these limitations on liability, the court concluded.

The Ninth Circuit also recognized the significant difficulties third-party service providers like GoDaddy would face if there was a cause of action for contributory cybersquatting.  In short, the court concluded that mark owners already had sufficient remedies for cybersquatting under the ACPA without extending liability by "a judicially discovered cause of action for contributory cybersquatting."

Ninth Circuit Concludes That Trademark Registration Cancellation Claim Does Not Provide Independent Basis for Federal Jurisdiction

This isn't a case that's likely to draw you in with its tantalizing facts (at least as recited by the Ninth Circuit), so anyone interested in the facts can read the Ninth Circuit's short and fairly concise opinion.

But the Ninth Circuit did address an interesting question of law on which it admittedly had previously given "contrasting interpretations."  Specifically, the court addressed the question whether a trademark registration cancellation claim, standing alone, provides an independent basis for federal subject-matter jurisdiction.

The relevant language of the Lanham Act gives district courts "the power to order the cancellation of a trademark registration 'in any action involving a registered mark.'"  This language, the Ninth Circuit concluded, specified that cancellation is only available if there is already an action involving a registered mark.  In other words, agreeing with the other circuits that had addressed the question, "this statutory language . . . 'creates a remedy for trademark infringement rather than an independent basis for federal jurisdiction.'"  This conclusion also preserved actions before the PTO's Trademark Trial & Appeal Board "as the primary vehicle for cancellation," the court concluded.

The case cite is Airs Aromatics, LLC v. Victoria's Secret Stores Brand Mgmt., Inc., Appeal No. 12-55276 (9th Cir. Feb. 28, 2014).

Third Circuit Concludes That Courts Have No General Authority To Cancel Copyright Registrations

The Third Circuit recently addressed two issues of first impression in that circuit relating to two copyright issues:  (1) when an authorship claim arises and accrues; and (2) whether courts have authority to cancel copyright registrations.

Since the facts aren't necessary to the Third Circuit's answer to these questions--the rather long and somewhat involved facts are detailed in the court's opinion--I'm jumping right to the answers.

As to the first issue, the Third Circuit joined the Second, Seventh, and Ninth Circuits and adopted the "express repudiation" rule.  When that rule is fused with the discovery rule, which the Third Circuit follows in determining when a cause of action accrues, the court concluded that a copyright joint authorship claim arises "once a plaintiff's authorship has been expressly repudiated since he can only be on inquiry notice once his rights have been violated."  Again agreeing with its sister circuits, the Third Circuit also concluded that a copyright registration standing alone is insufficient to serve as the express repudiation of joint authorship.

As to the second issue, for several reasons, the Third Circuit held that courts do not have the general authority to cancel copyright registrations.  Most of the court's reasons were statutory-based.  For instance, the court noted that there is no language in the Copyright Act granting courts general authority to cancel copyright registrations.  To the contrary, the Act bestowed all administrative functions and duties on the Register of Copyrights except as otherwise specified.  Moreover, the court noted that one provision of the Act did bestow specific cancellation authority on courts with respect to "original designs," thus suggesting that the courts didn't have general cancellation authority.

The Third Circuit also noted that the Lanham Act explicitly provided courts with general authority to cancel trademark registrations.  Congress's failure to include such language in the Copyright Act with respect to copyright registrations thus suggested that it did not intend for courts to have general cancellation authority with respect to such registrations.

The Third Circuit concluded by emphasizing that the courts were not without authority to police copyright registrations or to invalidate copyrights:

It . . . goes without saying that courts are authorized to police copyright registrations through authorship claims and infringement claims. . . .

[W]e are in no way holding that courts are incapable of invalidating underlying copyrights.  While the two concepts are undoubtedly related, the distinction matters.  Holding that federal courts have the authority to cancel registrations would essentially be declaring that the judicial branch has the authority to order a legislative branch agency that is not a party to the litigation to take an affirmative action.  A federal court's finding that a copyright is invalid, on the other hand, is a determination of ownership which does not disturb the registration of a copyright.  Courts have no authority to cancel copyright registrations because that authority resides exclusively with the Copyright Office.

(Footnote omitted).

The case cite is Brownstein v. Lindsay, Appeal Nos. 12-2506 & 12-4471 (3d Cir. Jan. 29, 2014).

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Ninth Circuit Orders Google To Remove "Innocence of Muslims" Film Based on Copyright Claim of Actress

This opinion from the Ninth Circuit has created quite a stir and for good reasons, some of which are touched upon below.

Cindy Lee Garcia was cast in a minor role for a film with the working title "Desert Warrior," which she was told was an adventure film set in ancient Arabia.  She received the four pages of the script in which her character appeared and was paid approximately $500 for three and a half days of filming.

But instead of being part of an Arabian adventure film, Garcia's scene (partially dubbed over) was used in the anti-Islamic film "Innocence of Muslims," which was posted on YouTube.  As a result of her role in the film, Garcia received death threats.  She took security precautions and filed multiple unsuccessful takedown notices under the Digital Millenium Copyright Act trying to get the video removed from YouTube.

Garcia filed a suit against Google and others (her amended complaint can be found here) and sought a temporary restraining order seeking removal of the film, claiming that posting the video infringed her alleged copyright in her performance in her scene.

The district court, treating Garcia's application as one for a preliminary injunction, denied it, concluding in part that she had delayed in seeking an injunction and that she was unlikely to succeed on the merits of her copyright claim because she gave the film's writer and producer an implied license to use her performance in the film.  The district court's short decision can be found here.

In an opinion written by Chief Judge Kozinski, to which Circuit Judge Smith dissented, the Ninth Circuit reversed the district court, remanding for that court to enter a preliminary injunction.  In the interim, the Ninth Circuit also issued a temporary injunction requiring Google to take down all copies of the film "from YouTube and any other platforms within its control and to take all reasonable steps to prevent further uploads."

In reversing the district court's denial of the preliminary injunction, the Ninth Circuit's majority opinion discussed two issues of particular interest:  Garcia's claim of a copyright interest in her performance in the film (apparently consisting of a single scene) and the nature of the alleged irreparable harm that would result if the injunction based on her copyright claim wasn't granted.

As to the first issue, the Ninth Circuit concluded that the film wasn't a joint work of which Garcia was a joint author under the Copyright Act.  But that didn't end the analysis because "a copyright interest in a creative contribution to a work [doesn't] simply disappear[] because the contributor doesn't qualify as a joint author of the entire work."  Instead, as the majority opinion saw it, because Garcia's "artistic contribution" (i.e., her acting performance in the scene) was fixed, "the key question remains whether it's sufficiently creative to be protectible."

The Ninth Circuit concluded that Garcia's performance was sufficiently creative, rejecting Google's argument that she didn't make a protectible contribution to the film because the writer/producer wrote the dialogue, managed the production, and dubbed over a portion of her scene.  The majority opinion characterized an actor's performance as "far more than speak[ing] words on a page," describing it as an "external embodiment" including "body language, facial expression and reactions to other actors and elements of a scene."

Relying on a Supreme Court opinion involving the copyrightability of telephone book white page listings, Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the Ninth Circuit--giving remarkably short shrift to a seemingly more complex question--concluded that Garcia's acting performance possessed the "minimal degree of creativity" necessary to be independently copyrightable.

 After reaching this potentially broad conclusion--albeit only for purposes of deciding the propriety of preliminary injunctive relief in this case--the majority opinion attempted to limit it, concluding that Garcia granted the film's writer/producer a broad implied license to use her performance in the film.  But despite emphasizing that such an implied license should be "construed very broadly," the use in this case exceeded the scope of the license by using it in the controversial "Innocence of Muslims" film when Garcia believed she would be appearing in an Arabian adventure film.

The second particularly interesting issue involved the requirement that Garcia demonstrate that irreparable harm would result if an injunction didn't issue.  And more specifically, because the requested injunctive relief was based on her copyright infringement claim, she had to show that the harm alleged "is causally related to the infringement of her copyright."

The harm Garcia alleged, however, were the death threats she received, and presumably would continue to receive, which the majority opinion concluded was sufficient to justify a preliminary injunction on her copyright infringement claim:

[The film's writer/producer's] unauthorized inclusion of her performance in "Innocence of Muslims" undisputedly led to the threats against Garcia.  Google argues that any harm arises solely out of Garcia's participation in "Innocence of Muslims" and not out of YouTube's continued hosting of the film.  But Garcia has shown that removing the film from YouTube will help disassociate her from the film's anti-Islamic message and that such disassociation will keep her from suffering future threats and physical harm.

But while death threats certainly are a type of harm and even ignoring any issues as to causation, the Ninth Circuit never addresses the question whether it is the type of harm that was intended to be addressed by copyright law, or whether copyright law is the appropriate vehicle to address such harm.

Moreover, the majority opinion gives no meaningful attention to Google's First Amendment prior restraint argument, simply stating that the "First Amendment doesn't protect copyright infringement."  In so doing, the opinion does not address the issue whether, by issuing an injunction requiring Google to take down the film and thereby stifling speech (even offensive, troubling speech), the injunction is contrary to the public interest.

The dissenting opinion--emphasizing that an abuse of discretion standard of review applied to the district court's decision--focuses largely on the majority opinion's conclusion that Garcia's acting performance was independently copyrightable, arguing that she did not "clearly have a copyright interest in her acting performance, because (1) her acting performance is not a work, (2) she is not an author, and (3) her acting performance is too personal to be fixed."

The dissenting opinion also takes issue with the majority opinion's analysis of the irreparable harm issue and notes the "public's interest in a robust First Amendment," an interest implicated by the injunction forcing Google to take down the film.

Whether one agrees or not with the dissenting opinion's reasoning on any or all of these issues, the opinion is well worth reading if only because it offers a more nuanced discussion of what would seem to be much more complex issues than is apparent from the majority opinion.

The case cite is Garcia v. Google, Inc., Appeal No. 12-57302 (9th Cir. Feb. 26, 2014).

California Court Concludes that First Amendment Provides Complete Defense to Publicity Rights Claim of Former Criminal Against Rapper

Plaintiff Ricky D. Ross is a former criminal who spent time in prison in connection with charges relating to cocaine trafficking.  He apparently gained some celebrity status as a result of "the enormous scale of his cocaine-dealing operations" and also received widespread coverage in the 1990s for a peripheral role in the Iran-Contra scandal.

Defendant William Leonard Roberts II is a former correctional officer turned apparently famous rapper who goes by the name "Rick Ross."  Although Roberts apparently referenced Ross's life story early in his career, Roberts denied that his performing name was based on plaintiff.  Roberts released his first commercial single in about 2005 and his lyrics often include references to running large-scale cocaine operations.

After a federal district court in California dismissed his federal claims and declined to exercise supplemental jurisdiction over his state law claims, Ross sued Roberts and other defendants in California state court alleging various state law claims all based on the allegation that Roberts had misappropriated Ross's name and identity to further Roberts's music career.

On defendants' motion for summary judgment, the trial court accepted defendants' statute of limitations argument, dismissing all of Ross's claims.  The appellate court affirmed that decision but on a different ground.

Specifically, although the issue was not argued in the trial court, the appellate court concluded that the First Amendment provided a complete defense to all of Ross's claims.

The court applied the "transformative test" adopted by the California Supreme Court to resolve conflicts between rights of publicity and rights of free speech and expression under the First Amendment.  As its name implies, the transformative test focuses on determining whether a work is transformative and specifically

looks at whether the celebrity likeness is one of the raw materials from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.  We ask, in other words, whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness.

If the case presents a close question, the court also may make a subsidiary inquiry that asks "whether the marketability and economic value of the challenged work derive primarily from the fame of the celebrity."

The appellate court did not, however, find the facts of this case to present a close question, characterizing Roberts's First Amendment defense as "quite obvious."

We recognize that Roberts's work--his music and persona as a rap musician--relies to some extent on plaintiff's name and persona.  Roberts chose to use the name "Rick Ross."  He raps about trafficking in cocaine and brags about his wealth.  These were "raw materials" from which Roberts's music career was synthesized.  But these are not the "very sum and substance" of Roberts's work. . . .

    Roberts created a celebrity identity, using the name Rick Ross, of a cocaine kingpin turned rapper.  He was not simply an imposter seeking to profit solely off the name and reputation of Rick Ross.  Rather, he made music out of fictional tales of dealing drugs and other exploits--some of which related to plaintiff.  Using the name and certain details of an infamous criminal's life as basic elements, he created original artistic works.

The "subsidiary inquiry" of the transformative test only cemented the validity of the First Amendment defense for the appellate court, which concluded that it "defie[d] credibility to suggest that Roberts gained success primarily from appropriation of plaintiff's name and identity, instead of from the music and professional persona that he (and the other defendants) created."

The appellate court thus affirmed the trial court's grant of summary judgment in favor of the defendants.

The case cite is Ross v. Roberts, Appeal No. B242531 (Cal. Ct. App. Dec. 23, 2013).