Cutting Edge Entertainment Law Seminar

8/4/2019 Cutting Edge Entertainment Law Seminar

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OUTINFRONT

Cutting Edge Entertainment Law SeminarNew Orleans

September 22-24, 2011

Henry Hank J. Fasthoff, IV

Adams and Reese LLP

Houston


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Cutting Edge [email protected]

Warner Bros. Entmt, Inc. v. X One X Prods

(AVELA)

1909 Copyright Act

Publication Without Notice

Public Domain The Evocation Doctrine?


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1909 Copyright Act

Prior to enactment of 1976 Copyright Act an author of a workhad a common law copyright until the work was published

Publication in compliance with the 1909 Acts noticerequirements turned the common law copyright into a federal

copyright

Publication without the proper notice injected the copyrightedmaterials into the public domain for anyone to use withoutrestriction


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Films & Cartoons

In 1939, MGM released The Wizard of Ozand Gone With TheWind

Subsequently released Tom & Jerrycartoons


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Wizard of Oz

Publicity photographs taken of the actors portraying Dorothy, TinMan, Cowardly Lion and Scarecrow posing in costume

Photographs were reproduced in the form of movie posters,lobby cards, still photos, press books and other materials

Publicity materials distributed without copyright notice


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Background Facts

AVELA and related companies license vintage arts and entertainmentimages for merchandising

AVELA acquired restored versions of the movie posters and lobbycards

From these publicity materials, AVELA extracted the images of thecharacters

AVELA licensed the extracted images for use with various types ofmerchandise, such as t-shirts, lunch boxes and statuettes


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Image Usage

Exact reproductions of publicity materials

Modified and combined with signature phrases fromthe film

Example: T-shirt with Theres no place like homeunderneath an image of Dorothys face


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Extracted images from different items and combined them in asingle product

Example: a publicity photograph of Dorothy posed withScarecrow serves as the model for a statuette, and anotherpublicity photograph of the yellow brick road serves as the

model for the base of the statuette

Not only combined publicity materials, but transformed themfrom two dimensional to three-dimensional format


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The Dispute

Warner sued for copyright infringement, claiming that the images takenfrom the publicity materials infringed the copyrights for the films

AVELA said publication of the materials without copyright noticeinjected them into the public domain

At summary judgment stage, Warner conceded it had no copyrightownership interest in the publicity materials

Warner also agreed not to assert copyright claims against the exactreproductions


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District Courts Decision

District court did not consider whether the publicity materialswere injected into public domain

Instead held that modification of the extracted imagesconstituted infringement of the films, even if the images were

extracted from public domain materials

Entered a permanent injunction against all uses except exactreproductions of the images, which was not contested byWarner


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Appeal to Eighth Circuit

Appellate courts analysis differed, finding it necessary to firstdetermine whether the materials were dedicated to the publicdomain

Concluded that the publicity materials were injected in public

domain (discussion re limited vs. general publication in case)

Appellate court considered whether AVELA appropriatedoriginal elements of the films, or solely elements that are in thepublic domain


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Court divided the products into three categories foranalytical purposes:

exact reproductions of public domain materials

composite products consisting (i) solely of extracts from thepublic domain items, or (ii) of a combination of extracts frompublic domain and expression from the film

three-dimensional products (such as figurines) that weretransformative representations of two-dimensional publicdomain materials


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Exact Reproductions

No infringement of publicity materials in the public domain andcould be used, but only as exact reproductions


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Composite Materials

Combining faithful reproductions of extractions from the publicdomain materials adds an increment of expression that evokesthe film characterin a way the individual items of publicdomain material did not.


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Transformative Uses

Based on same rationale, court concluded the three-dimensional representations of two-dimensional images takenfrom the public domain materials were infringing

Example: a statuette of Tin Man three dimensionalaspects could only have been gained from the films, not fromthe two-dimensional printed works


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Take Away Point

Doctrine of evocation?

Eighth Circuit is the first one to take thisapproach


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Line Blurring

Courts approach blurs the line between copyright andtrademark law

People recognize the film as the source of the character that isfeatured in the merchandise

Thoughts?


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Warner Bros. Entmt, Inc. v. WTV Systems,

Inc. (Zediva)

Copyright

Public Performance Right

Transmit Clause


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Background Facts

WTV purchased hundreds of DVD players and installed them in acompany-controlled data center

Also purchased DVDs containing the MPAA members copyrighted

works

WTV customers could create an account, log into the account, rent aDVD and DVD player

Press play to request that the DVD be streamed over the Internet to

the customers computer


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Background Facts

WTV reasoned that streaming the DVDs into private homeswould not implicate the public performance right, therebyallowing WTV to avoid licensing fees

WTV said its business model was the same as a brick-and-

mortar DVD rental store

Just required a longer cord between the DVD and the TV

MPAA filed suit and moved for preliminary injunction


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Competitive Advantages

Avoiding license fee gave WTV three competitive advantages

Price Advantage

WTV charged customers $1.99 to rent one DVD, or $10.00 for 10

DVDs

Standard video on demand (VOD) services charged between

$3.99 and $5.99 for new releases


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Competitive Advantages

Availability advantage

Licenses require works to be temporarily taken off themarket by VOD services during exclusivity periods to otherdistribution outlets, such as cable or satellite providers

Durational access advantage

Licenses restrict viewing periods to 24-48 hours, but Zedivaoffered customers access to a rented DVD for 14 days


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Courts Analysis

Court was called on to interpret the transmit clause of theCopyright Act

Court first looked at whether the performance was public

To perform a work publicly means:

to transmit or otherwise communicate a performanceof theworkto the public, by means of any device or process,whether the members of the public capable of receiving theperformancereceive it in the same place or in separate placesand at the same time or at different times


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Court said the phrase to the public, means a member of the

public, and does not necessarily mean a to a public place

Court determined the transmissions were to members of thepublic, e.g., WTVs customers


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Relied on the Cablevisioncase

Cablevisioncourt found that transmissions that were

recorded to a DVR for subsequent playback were not publicperformances because:

they emanated from unique copies of the works made

at the direction of cable subscribers (by pressing the

record button)

person making the copy had sole access to the copy andsole control over subsequent playback


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Therefore, the Court reasoned, any performance of the uniquecopy would be a private one

Ignores possibility that public facilities (hotels, conferencecenters, restaurants) could record programs using a DVR forplayback to large audiences that would obviously constitutetransmissions to the public.


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The Zedivacourt adopted the Cablevisionreasoning

In contrast to the Cablevisionscenario

WTV had sole control over the copies, e.g., the DVDs

Same copies would be used time and again to perform copyrightedworks to many different members of the public

Online transmission of remotely-played DVDs constituted publicperformances of the MPAA members works

Preliminary injunction granted, case now on appeal


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United States v. Am. Soc'y of Composers

(ASCAP v. RealNetworks)

Copyright

Public Performance Right

Digital Download


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Background Facts

ASCAP licenses the public performance rights of artists andcollects revenue derived from the exploitation of those rights

Offers blanket licenses that allow licensees to use anycomposition in ASCAP catalog in exchange for a single fee

Yahoo! and RealNetworks publicly perform music over their

websites in various audio, video and audiovisual formats

Offer downloads of permanent digital copies of recordingsembodying musical works of ASCAPs members


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ASCAPs Position

ASCAP took the position that digital downloads constitutepublic performances, thereby making the downloads subject topayment of additional fees to ASCAP

The district court disagreed with ASCAPs argument and

granted summary judgment in favor of Yahoo! andRealNetworks


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Appeal

On appeal, the Second Circuit construed the definition of to

perform a work to resolve the dispute

[T]o perform a work means to recite, render, play, dance, or

act it, either directly or by means of any device or process.


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The court concluded that a download is neither a dance nor an

act, then considered whether it could fall within the meaning of

recite, render, or play, and explained:

Itzakh Perlman gives a "recital" of Beethoven's Violin Concerto in D

Major when he performs it aloud before an audience. Jimmy Hendrixmemorably (or not, depending on one's sensibility) offered a "rendition"of the Star-Spangled Banner at Woodstock when he performed it aloudin 1969. Yo-Yo Ma "plays" the Cello Suite No. 1 when he draws the

bow across his cello strings to audibly reproduce the notes that Bachinscribed. Music is neither recited, rendered, nor played when arecording (electronic or otherwise) is simply delivered to a potentiallistener


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Court reasoned that a performance requires contemporaneous

perceptibility

Court held that the downloads were not musical performancesthat are contemporaneously perceived by the listener

Said they were simply transfers of electronic files containing

digital copies from an on-line server to a local hard drive

Affirmed the district courts summary judgment


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No Doubt v. Activision Publishing, Inc.

Rights of Publicity First Amendment

Transformative Use


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Background Facts

Activision is the publisher of the Band Herovideo game

No Doubt entered into a license agreement with Activision thatpermitted Activision to:

Create avatars using members personal attributes

Use three No Doubt songs in Band Hero


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Conditions

License required Activision to obtain approval of No Doubts

members for all uses of their personal attributes

Avatars could be used only to perform No Doubt songs


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The Dispute

Shortly before the launch of Band Hero, however, the band

members discovered that their avatars could be unlocked and:

used to perform any of the songs in the Band Herocatalog

Gwen Stefanis voice could be altered to sound like a mans,

and the male members of the group could be made to soundlike women, and

the members could be made to perform independently orwith members of other bands


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Activisions Response

Upon complaining to Activision, Activision acknowledged that ithired actors to impersonate No Doubts members performingother songs

The band demanded that Activision remove the unlockingfeature for its members avatars, but Activision refused

No Doubt filed suit, alleging violation of its members rights ofpublicity, among other claims


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Protected Speech?

Activision argued that the No Doubt avatars were transformative

enough to bring its conduct within the free speech protections ofthe First Amendment

Filed an anti-SLAPP motion seeking to dismiss No Doubtsclaims

The trial court denied Activisions anti-SLAPP motion andActivision appealed


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Courts Conclusion

California Court of Appeals employed a test requiring Activisionto show that the new work adds significant creative elements soas to be transformed into something more than a mere celebritylikeness or imitation

The court said the manner in which Activision utilized thepersonal attributes of No Doubts members did not warrant FirstAmendment protection

Said instead, that, the expressive elements of the game remainmanifestly subordinated to the overall goal of creating aconventional portrait of No Doubt so as to commercially exploitits fame.

Documents

Cutting Edge Entertainment Law Seminar