When a foot is only 11 inches, and a Batmobile is a character

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In this Episode:

Subway’s footlong subs aren’t
Bikram yoga isn’t too hot on court ruling
Soundalikes strike dissonant chord for the Black Keys
Podcast Patent lawsuit
Batmobile is a character, not just a prop,
and more…

Hosts:

Website: http://firemark.com http://theatrelawyer.com, Twitter: @gfiremark

Website: http://createprotect.com Twitter: @tamerabennett

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Show Notes

Episode 038

February 19, 2013

Julie Taymor/Spider-Man matter nearly settled, but back on Court’s docket
THResq: http://www.hollywoodreporter.com/thr-esq/hollywood-docket-hobbit-slot-machine-417117
THResq: http://www.hollywoodreporter.com/thr-esq/julie-taymors-lawsuit-spider-man-411242

Background – In November 2011, Taymor sued the producers of the Broadway musical Spider-Man: Turn Off the Dark, claiming that she was a co-owner in the book of the musical and the underlying copyright. The producers of the show lodged a counterclaim, alleging that it took “superhuman efforts” to save the show after Taymor departed.
In August 2012, a preliminary settlement was reached, and the case dismissed. The parties have been unable to finalize the settlement since.
After missing a deadline and extensions allowed by the court, the parties have notified the court at the end of January that they were days away from amending their license agreement in settlement of the dispute.
While no final word has come down, it appears that the end has finally arrived.

Righthaven Update:
Ars Technica: http://arstechnica.com/tech-policy/2013/02/remember-righthaven-on-appeal-copyright-troll-looks-just-as-bad/

Righthaven is back, this time appealing two cases to the 9th Circuit Court of Appeals
In 2011, Righthaven sued various defendants (mostly bloggers) on behalf of the Las Vegas Review-Journal and the Denver Post, over the reposting of the newspapers’ articles. Courts found that Righthaven had no standing to sue under Silvers v. Sony Pictures (which did not allow standing when the contracts only transferred a “bare right to sue”).
Righthaven’s new attorney, Erik Syverson, argued that Righthaven and Stevens Media (parent company of the Las Vegas Review-Journal) attempted to comply with the Silvers case. One judge expressed the view that it looked like they tried to “get around” Silvers, calling Righthaven’s agreement “form over substance.” Another judge pointed out that Stevens Media could take back the rights at any time, evidence that the transfer of copyright was not meaningful.
Also at issue was Fair Use. On this, the judges seemed more forgiving to Righthaven. In Righthaven v. Hoehn, the posting by a blogger of an entire op-ed from the Las Vegas Review-Journal was found to be fair use. The lower court found that, since the posting of the article spurred discussion on a public policy issue and didn’t compete with the original, the use was fair. Now, on appeal, the judges are questioning the transformative nature of such a use.
The Hoehn and Stevens attorneys are looking for a win on the standing issue to preempt the fair use issue from being relevant. We look forward to the final decision from the 9th Circuit.

Appeals Court Rejects Photographer’s Claim That Sony TV Movie Stole Image:
THResq: http://www.hollywoodreporter.com/thr-esq/appeals-court-rejects-photographers-claim-409962
The Unruly of Law: http://theunrulyoflaw.blogspot.com/2013/01/1st-cir-shoots-down-freelance-photogs.html

Donald Harney lost an infringement suit against a production company that he claimed used his photograph without permission in violation of federal copyright law.
In 2007, the photographer photographed a blond girl in a pink coat riding piggyback on her father’s shoulders as they emerged from a church. This photograph soon became a national media sensation when the father abducted the girl a year later.
A production company produced a made-for-television movie based on the father’s identity deception and depicted the photograph using an image that was similar in pose and composition to the original.
On appeal, the First Circuit determined that no jury could properly conclude that the production company’s adaptation of the photograph infringed the photographer’s copyright because (1) the photographer had no role in creating the central element: a girl riding piggyback on her father’s shoulders, (2) the subsequent events did not transform the unoriginal elements of the visual work into protectable subject matter, (3) almost none of the protectable aspects of the photograph were replicated in the image, and (4) the photograph and the image were notably different in lighting and coloring, giving them aesthetically dissimilar impacts

Lawsuit Claims That Subway Footlongs Don’t Measure Up:
NY Post: http://www.nypost.com/p/news/national/chicago_legal_files_subway_suit_ujoo1Z8beB9S8g4hX9kkUN
CBS News Chicago: http://chicago.cbslocal.com/2013/01/23/chicago-lawsuit-claims-subway-short-changing-customers-on-footlongs/

When it comes to Subway sandwiches, size matters. Multiple complaints have been filed against Subway after people who measured their “Footlong” sandwiches found that they were only 11 inches long.
One complaint, filed in New Jersey as a federal class-action suit, seeks compensation for the missing inches, and to “either get [Subway] to sell sandwiches that are foot long, or get them to put up a disclaimer, similar to what McDonald’s does with its Quarter Pounder.”
About 25% of the company’s revenues come from selling Footlong subs, totaling $2.85 billion a year. The complaint estimates that about 5% (or $142 million) of that represents “unfair and deceptive revenue.”
Another complaint, filed in an Illinois district court, seeks $5 million, alleging that the company behind Subway restaurants acted “fraudulently and deceptively,” by producing ads that promise “Footlong” sandwiches, which often turn out to be smaller than advertised.
In response to these and similar complaints, the company has said it uses the phrase “Footlong” as a trademarked descriptive name for its sandwiches, not an actual measurement.

From Trademark Manual of Examining Procedure: The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff’d sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956). A third question, used to distinguish between marks that are deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).

School Policy Seeks to Own Students’ Intellectual Property:
Washington Post: http://www.washingtonpost.com/local/education/prince-georges-considers-copyright-policy-that-takes-ownership-of-students-work/2013/02/02/dc592dea-6b08-11e2-ada3-d86a4806d5ee_story.html

In Prince George’s County, MD, pictures drawn by first-graders, lesson plans developed by teachers, or apps created by high-schoolers may soon belong to the school system, not the individual.
A proposal by the Prince George County Board of Education would copyright work created by staff and students for the school. The proposal is part of a broader policy that would provide guidelines for the “use and creation” of materials developed by employees and students.
The policy: “Works created by employees and/or students specifically for use by the Prince George’s County Public Schools or a specific school or department within PGCPS, are properties of the Board of Education even if created on the employee’s or student’s time and with the use of their materials. . . . Further, works created during school/work hours, with the use of school system materials, and within the scope of an employee’s position or student’s classroom work assignment(s) are the properties of the Board of Education.”
When questioned about the policy, Board Chair Verjeana Jacobs said the board never “inten[ded] to declare ownership” of students’ work, and that they “want the district to get the recognition . . . not take their work.”
Jacobs said that it was possible for amendments to the policy to be made at the next board meeting. The board approved the policy for consideration by a vote of 8 to 1 last month but has since removed the item from its agenda.

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FEATURES

Bikram Yoga Protected by Trademark NOT Copyright:
CreateProtect: http://ipandentertainmentlaw.wordpress.com/2013/01/04/bikram-yoga-protected-by-trademark-not-copyright-its-hot/

Bikram Yoga is a system of 26 poses, usually performed in a heated room. It was developed by Yogi Bikram Choudhury in 1971, and Bikram holds a trademark on the name, which he licenses to yoga instructors. Several of Bikram’s instructional videos and materials are copyrighted.
In the Central District of California, Bikram settled one dispute with a yoga studio that was advertising “traditional hot yoga.” Bikram claimed copyright protection over the yoga sequence.
In a very similar case in the same district, however, Bikram was the victim of summary judgment by Evolation Yoga, LLC. The court held that the system of poses was not copyrightable.
There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.

The Black Keys on Warpath Against ‘Soundalikes’ in TV Commercials:
THResq: http://www.hollywoodreporter.com/thr-esq/black-keys-warpath-soundalikes-tv-414742

After settling two lawsuits against Pizza Hut and Home Depot, The Black Keys are now suing a casino operator for using “sound-alikes” in their TV commercials.
Ad agencies that fall in love with a particular song are presented with a choice: 1) obtain the rights to use the song from the artist, or 2) find a song that’s similar, but different enough to avoid lawsuits. Increasingly, advertisers are choosing the latter, and The Black Keys are not standing for it.
The new suit names Pinnacle Entertainment (which owns many casinos nationwide) and Manhattan Production Music (a producer of commercial music) as defendants, and claims infringement of the song “Howlin’ for You.”
According to The Black Keys, the defendants’ commercial is “substantially similar” to the band’s hit song. They further claim the defendants violated trademark law by suggesting a false designation of origin and creating unfair competition for them.
Pinnacle lists on its YouTube page that the commercial is “a licensed track inspired by ‘Howlin’ for You’ by The Black Keys,” and a rep for the casino recently tweeted, “We bought a licensed musical interpretation of the song.”
Background info:

In the late 80’s, Bette Midler sued Ford Motor Company for using a soundalike in their advertisements. The 9th Circuit held that when a person’s voice is distinctive, widely known, and deliberately imitated to sell a product (as it was in that case), then a tort was committed in California under its right of publicity statute. Midler v. Ford, 849 F. 2d 460 (9thCir. 1988).

In the early 90’s, Tom Waits filed and won a similar suit against Frito Lay over a Doritos commercial that featured a soundalike. The 9th Circuit upheld their ruling in the Midler case against an argument that copyright law preempted the right of publicity statute. Waits v. Frito Lay

Court Finds For Cab Calloway’s Grandson in Trademark Dispute:
Entertainment Law Matters: http://www.entertainmentlawmatters.com/?p=2365

Christopher W. Brooks, the eldest grandson of Calloway, and Plaintiff Creative Arts by Calloway, LLC, comprising of Calloway’s daughters, son-in-law, and widow, have been involved in a trademark dispute over the mark CAB CALLOWAY since at least as early as 2009.
Brooks had been performing as The Cab Calloway Orchestra, a tribute band to his grandfather, since 1998.
The Plaintiff filed an intent to use application in 1999 for the mark “Cab Calloway”
In 2009, Brooks opposed the application for the mark, based on his own prior use
TTAB found for Brooks, and Plaintiffs appealed the decision to the Southern District of NY
Brooks argued that a 2001 assignment of the Intent to Use application from Mrs. Calloway to the Plaintiff was invalid. In order for such a transfer to be valid under the Lanham Act, it must be assigned to a successor in the business, and that business must be “ongoing and existing.”
The court found that it was not, even though Plaintiffs showed activities such as:

authorizing a license to sell clothing bearing the mark CAB CALLOWAY
founding the Cab Calloway Foundation
commencing negotiations for a Broadway musical based on Calloway’s music and life story
licensing and receiving royalties from Calloway’s musical compositions, and
retaining professionals to aid with management and enforcement of Calloway’s rights.

Personal Audio Sues Adam Corolla and Other Podcasters Over Podcasting Patent:
TechDirt: http://www.techdirt.com/articles/20130206/07215421891/patent-troll-says-it-owns-podcasting-sues-adam-carolla-howstuffworks.shtml
Ars Technica: http://arstechnica.com/tech-policy/2013/02/eff-to-defend-against-troll-with-podcasting-patent-granted-in-2012/
The Patent: https://www.eff.org/deeplinks/2013/02/podcasting-community-faces-patent-troll-threat-eff-wants-help

The Electronic Frontier Foundation has announced that it’s preparing to tackle the latest patent troll, which claims to have patented podcasting.
Last month, Personal Audio LLC, which has not sold a single product since 1998, sued Ace Broadcasting LLC, which runs such big-name podcasts as The Adam Carolla Show and Stuff You Should Know, and Howstuffworks.com for infringing its patent on a “system for disseminating media content representing episodes in a serialized sequence.”
While its patent was only issued last year, Personal Audio argues that the patent is the child of a “precursor to podcasting,” which it filed in a different form back in 1996, but which eventually led to the present patent.
Personal Audio has previously sued Apple, Samsung, Research in Motion, Motorola, and HTC for infringing various patents it owned.
In 2011, the company won $8 million against Apple for a patent on “playlists,” or an “Audio program player including a dynamic program selection controller.”
Claim 31 is at issue here – here is the text:
31. Apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available, said apparatus…

In another suit filed in January — Adam Carolla’s former podcast partners sue for their share of podcast profits.

Playwright of ‘Point Break’ Parody Wins $250K Trial Verdict:
THResq: http://www.hollywoodreporter.com/thr-esq/playwright-point-break-parody-wins-405930
THResq (blurb near bottom): http://www.hollywoodreporter.com/thr-esq/hollywood-docket-hobbit-slot-machine-417117

In 2008, playwright Jamie Keeling premiered a parody stage version of the 1991 film Point Break called Point Break Live!. The play, which had untrained audience members recite Keanu Reeves’ lines to comically mimic the actor’s stiff delivery, was a big hit.
Recently, however, the producer, New Rock Theater Productions, refused to pay Keeling royalties, reasoning that Keeling had no right to her script because it was an unauthorized derivative work based on the film.
The threshold question was an interesting one: Is a parody entitled to copyright protection?
The answer, according to New York federal judge Thomas Griesa, is “absolutely.” Parodies are indeed copyrightable as long as they are original, and later derivative works can be alleged to be too similar to earlier derivative works.
At trial, New Rock argued that Keeling’s play wasn’t original, or rather, that it wasn’t “fair use.” But Keeling convinced the jury that her portrayal “captured the effect of Keanu Reeves’ performance in the film,” and the jury awarded her $250,000 in damages.
Keeling then sought to permanently enjoin New Rock from infringing her work. In other words, if New Rock wants to make fun of Keanu Reeves in Point Blank, it would have to figure out a new creative way to do so. Keeling’s method has been copyrighted.

Ray Charles’ Children Win Lawsuit Over Song Rights Termination:
THResq: http://www.hollywoodreporter.com/thr-esq/ray-charles-children-win-lawsuit-416809

Before his death, Ray Charles gathered his 12 children and left them each a $500,000 trust. He left the rest of his estate to the Ray Charles Foundation, which benefits the hearing and vision-impaired.
Recently, his children have attempted a copyright termination on many of his most popular songs. The Foundation sued them, claiming that they had breached their agreement with their father.
The California District Court judge made a few important rulings here:

Anti-SLAPP statute applies to termination notices

Therefore, the Ray Charles Foundation must prove the likelihood of prevailing in the case
The key issue was whether the songs were work-for-hire or not

If they were not, then they could not waive their termination rights under copyright law when Charles gathered his children prior to his death
If they were work-for-hire, then the termination attempts were not claims against the Charles estate, and therefore there was no breach of contract
The court also ruled that “Beneficial Owners” did not have standing to challenge termination notices and copyright infringement – the statutes were intended to apply only to authors, statutory heirs and grantees of transfers and their successors

Warner Bros. Wins Lawsuit Against Maker of Batmobile:
THResq: http://www.hollywoodreporter.com/thr-esq/batmobile-lawsuit-warner-bros-wins-419661

California resident Mark Towle operates Gotham Garage, a company that specializes in replicas of film and television automobiles. He has sold two replicas of the 1966 Batmobile, as well as one of the 1989 version of the Batmobile.
Towle was sued by Warner Bros., who claimed that Towle was in violation of Warner’s trademark and copyright.
In a recent ruling on dueling summary judgment motions, Warner was given a victory
The court stated that “it is clear that the Batmobile is a copyrighted character”
Defendant’s attorney Larry Zerner argued that Warner was claiming copyright protection on nearly the entire Batmobile, even though copyright law does not cover “useful articles”
District Court judge Lew stated that “Defendant did not copy the design of a mere car; he copied the Batmobile character. The fact that the unauthorized Batmoble replicas that Defendant manufactured — which are derivative works — may be ‘useful articles’ is irrelevant. A derivative work can still infringe the underlying copyrighted work even if the derivative work is not independently entitled to copyright protection.”
Additionally, the court held that Towle infringed the trademarks of Warner, as well, citing that

Towle used Batman marks in his advertising
that the bat design marks are “distinct”
that most of Towle’s customers asked if he had a relationship with Warner Bros.
that the studio has licensed toy versions of the Batmobile
that a “strong possibility” exists that the studio “will expand its business to compete” with the custom builder of Batmobile