Pattishall IP Blog

April 29, 2014

Performance of Magic Trick Protected Under Copyright Law, Nevada District Court Holds

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:03 am

SIA-LRBy: Seth I. Appel, Associate

A renowned illusionist has achieved a very real victory in court. The U.S. District Court for the District of Nevada held that Teller’s performance of his Shadows magic trick is protected under copyright law, even though the magic trick itself is not. Teller v. Dogge, 110 USPQ2d 1302 (D. Nev. 2014).[1]

Teller – a well-known magician, best known as half of Penn & Teller – has performed Shadows for over three decades. This illusion involves a spotlight pointed at a vase containing a rose, projecting a shadow onto a screen as shown below:

Magic Trick-Teller Blog Post

Teller, wielding a large knife, slowly cuts the leaves and petals of the rose’s shadow on the screen. Meanwhile, the corresponding leaves and petals of the real rose fall to the ground.

Teller brought a lawsuit against Gerard Dogge, a Dutch performer who uploaded to YouTube two videos of himself performing a similar illusion, entitled The Rose and Her Shadow.

Dogge’s caption for the videos stated: “I’ve seen the great Penn & Teller performing a similar trick and now I’m very happy to share my version in a different and more impossible way with you.” Dogge admitted that he posted the videos in an attempt to sell the illusion’s secret.

The court last month court granted Teller’s motion for summary judgment on his copyright infringement claim, holding that Teller’s performance of Shadows is subject to copyright protection. While magic tricks are not protected under copyright law, the court explained, the Copyright Act protects “dramatic works” and “pantomimes.” 17 U.S.C. § 102(a). “The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion is its central feature does not render it devoid of copyright protection,” the court found.

The court rejected Dogge’s argument that Teller had waived his copyright because his partner, Penn Jillette, had issued a challenge of sorts, publicly stating that “no one will ever figure out” Shadows. This statement, the court observed, “merely provokes others to unearth the secret, not perform the work.” And for copyright purposes, the secret behind the trick is insignificant: “the performance it is used for is everything.”

Having determined that Teller’s illusion merited copyright protection, the court had no trouble finding infringement. Applying the Ninth Circuit’s two-part analysis – an “extrinsic test” and an “intrinsic test” – the court found that Teller’s Shadows and Dogge’s The Rose and Her Shadow were substantially similar.

The court noted that the two parties’ illusions were “nearly identical twins,” even though their secrets may have been different.

In discerning substantial similarity, the court compares only the observable elements of the works in question. Therefore, whether Dogge uses Teller’s method, a technique known only by various holy men of the Himalayas, or even real magic is irrelevant, as the performances appear identical to an ordinary observer.

Last week the court set trial for June 2, 2014, to determine whether Dogge committed willful infringement and to decide Teller’s unfair competition claim.

In its summary judgment order, the court noted that the magic community has traditionally blackballed performers who reveal other magicians’ secrets. This case confirms that wronged magicians also may have another avenue for relief, in federal court.

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Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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[1]http://scholar.google.com/scholar_case?case=12052870780115350990&q=teller+v+dogge&hl=en&as_sdt=400006.

 

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February 7, 2014

Utilitarian Shape of Hookah Not Subject to Copyright Protection, Even if Distinctive, Ninth Circuit Holds

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:27 pm

SIA-LRBy: Seth I. Appel, Associate

Inhale Inc.’s efforts to protect the shape of its hookah under copyright law went up in smoke, as the Ninth Circuit affirmed summary judgment in favor of Starbuzz Tobacco, Inc.  Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir. 2014).[1]

Inhale, a designer and manufacturer of smoking products, sold the hookah[2] shown below:

Hooka

It obtained a U.S. copyright registration for this product.

Inhale sued Starbuzz for copyright infringement in the U.S. District Court for the Central District of California, alleging that Starbuzz sold a similar hookah.  Inhale’s claim was based entirely on the shape of Starbuzz’s hookah.  For purposes of the lawsuit, Inhale disclaimed copyright protection to the skull-and-crossbones graphic.

The district court granted Starbuzz’s motion for summary judgment in 2012, holding that Inhale did not own a valid copyright in the shape of its hookah, notwithstanding its registration.  Last month the Ninth Circuit Court of Appeals affirmed.

The Copyright Act generally protects “original works of authorship,” including sculptural works.  But it does not protect “useful articles.”  Under the Copyright Act, a “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  17 U.S.C. § 101.

Individual design elements of a useful article may be subject to copyright protection, to the extent that they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. 101.  Such protectable elements may be either physically separable or conceptually separable.

Inhale argued that the shape of its hookah was conceptually separable from its utilitarian features, but the Ninth Circuit disagreed.  It explained:  “The shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.”  739 F.3d at 449.

The court, citing Copyright Office practice, rejected Inhale’s contention that the distinctiveness of the hookah shape affected the separability analysis.  The court observed:

Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “the shape of the alleged ‘artistic features’ and of the useful article are one and the same.”

739 F.3d at 449 (quoting Compendium of Copyright Office Practices II, § 505.03).

The Ninth Circuit also affirmed the district court’s award of attorneys’ fees to Starbuzz under 17 U.S.C. § 505, and further awarded Starbuzz its attorneys’ fees on appeal.

The Ninth Circuit’s decision is a blow to producers of creative works that have utilitarian functions, including other sculptural works such as bottles and vases.  In view of this decision, it may be harder for such entities to address copying by competitors – at least under copyright law.

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Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.


[1] http://scholar.google.com/scholar_case?case=621471655821174883

[2]A hookah is a device for smoking tobacco, in which the smoke passes through a water basin, which filters and cools the smoke before it is inhaled by the user.  See http://en.wikipedia.org/wiki/Hookah.

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September 27, 2012

Publication of Noelia’s Secret Wedding Photos Not Fair Use, Ninth Circuit Finds

Filed under: Copyright, First Amendment, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:10 pm

By: Seth I. Appel

The Ninth Circuit Court of Appeals held that a gossip magazine’s publication of photographs of a secret celebrity wedding did not constitute fair use under the Copyright Act.  Monge v. Maya Magazines, Inc., 688 F.3d 1164 (9th Cir. Aug. 14, 2012).

Noelia Lorenzo Monge, the Puerto Rican pop singer and model known to the world as Noelia, married her manager, Jorge Reynoso, in January 2007.  The couple attempted to keep their marriage a secret to maintain Noelia’s image as a single sex symbol.  Only the minister and two chapel employees witnessed the wedding ceremony.  For two years Noelia and Reynoso succeeded in keeping their marriage a secret, even from their families.

In the summer of 2008, Oscar Viqueira, a paparazzo who worked as a driver and bodyguard for Noelia and Reynoso, discovered a memory chip containing photographs of the wedding night.  Viqueira sold the photos to Maya Magazines for $1,500, without Noelia’s or Reynoso’s permission.

Maya published three photos of the wedding ceremony, and three additional photos from the wedding night, in Issue 633 of TVNotas Magazine.  Until then, the photos had been unpublished.  The TVNotas cover headline stated:  “The Secret Marriage of Noelia and Jorge Reynoso in Las Vegas.”  The photo spread inside referred to the “first and exclusive photos of the secret wedding.”  Issue 633 was the first time the public learned of the wedding – including Reynoso’s mother, who berated her son for getting married without telling her.

Noelia and Reynoso promptly registered the copyrights in five of the photos and then brought suit against Maya for copyright infringement.  The Central District of California granted summary judgment in favor Maya based on fair use.  2010 WL 3835053 (Sept. 30, 2010).  The Ninth Circuit reversed.

Fair use is an affirmative defense to copyright infringement.  The fair use doctrine, the Ninth Circuit explained, presumes that unauthorized copying has occurred but protects such copying under certain circumstances.  Section 107 of the Copyright Act enumerates four factors for courts to consider in evaluating a fair use defense:

(1)       the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)       the nature of the copyrighted work;

(3)       the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)       the effect of the use upon the potential market for or value of the copyrighted work. (more…)

April 27, 2012

Hey Ya! District Court Dismisses Copyright Lawsuit Against André 3000’s “Class of 3000″

Filed under: Copyright, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:40 pm

by Seth I. Appel, Trademark Attorney

In 1997, Timothy McGee pitched an animated TV series, “The Music Factory of the 90’s,” to The Cartoon Network.  McGee’s show, set in Atlanta, centered on Tony “The Play Maker” Rich, a wealthy corporate attorney who leaves his law firm to become a music producer.  The show would feature animated versions of well-known guest musicians.  Each episode would include a musical performance, and at the end of the episode the guests would appear in their live-action state.  The show would deal with serious issues such as racism and violence, and it aimed to teach viewers lessons about the music industry and life.  The Cartoon Network rejected “The Music Factory of the 90’s” because it did not meet the network’s programming needs at the time.

Nearly ten years later, The Cartoon Network debuted “Class of 3000,” an animated series co-created and co-produced by Andre “Andre 3000″ Benjamin, best known as one-half of the hip-hop duo Outkast.  This show was also set in Atlanta.  It focused on Sunny Bridges, a musical superstar who returned to Atlanta to teach, and his students at a performing arts school.  Sunny displayed supernatural abilities and lived in a magical house in the woods.  Benjamin provided the voice of Sunny, and each episode included his original music.  According to the complaint, “Class of 3000″ taught viewers lessons, and the plan was for animated versions of real artists to appear on the show.

In May 2008, “Class of 3000″ concluded its second and final season.  Shortly following, McGee brought suit against Benjamin, The Cartoon Network, and its parent company, Turner Broadcasting Systems, Inc., alleging copyright infringement and other claims.

The court granted the motion to dismiss of The Cartoon Network and TBS, the only defendants that McGee served, because McGee was unable to show probative similarity between “The Music Factory of the 90’s” and “Class of 3000.”  McGee v. Benjamin 3000, 102 U.S.P.Q.2d 1299 (D. Mass. March 20, 2012).

To demonstrate copyright infringement a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.  There was no dispute McGee satisfied the first element.  He owned a copyright registration for a treatment of “The Music Factory of the 90’s” and related materials.  However, McGee could not demonstrate actionable copying.

In the First Circuit, establishing copying involves two steps.  First, the plaintiff must show that the defendant “actually copied the work as a factual matter,” either through direct evidence or through indirect evidence of access and probative similarity.  In comparing the works to determine similarity, only protectible elements are relevant; the court must ignore “unprotected ideas or unoriginal expressions.”  Second, if court finds probative similarity, then it considers substantial similarity.  “Two works are substantially similar if a reasonable, ordinary observer, upon examination of the two works would conclude that the defendant unlawfully appropriate the plaintiff’s protectable expression.”

The court found McGee’s claims insufficient with respect to probative similarity.  McGee’s vague references to similarities in “location, characters, content, format, and dramatis personnae” were not enough.  The only specific similarities, the court explained, were that both shows take place in Atlanta; both shows involve the music industry; and both shows involve a character who left his job to try something new.  But McGee does not have the exclusive right to any of these elements.

McGee’s argument regarding probative similarity runs up against several hurdles often encountered by those who seek to enforce a copyright in a treatment for a television show, movie, or theatrical performance. Most notably, there are very few elements of the Music Factory treatment that are original; most of the alleged similarities are noncopyrightable “basic concepts and ideas” or “stock scenes and characters.”

Because ideas are not protected by copyright, whether or not the defendants copied McGee’s ideas was irrelevant.  Further, under the scenes a faire doctrine, copyright generally does not protect “plots, subplots or themes” insofar as they are “for all practical purposes indispensable, or at least customary, in the treatment of a given subject matter.”  For example, “the plot device of a protagonist leaving one profession to embark on an unrelated profession with little experience but considerable passion is a familiar one.”

Likewise, copyright does not protect stock characters.  The court found that several characters in the parties’ shows, such as young musicians and a tough executive, were largely stock characters.  Meanwhile, the shows’ main characters – Sunny and The Play Maker – were “in certain fundamental senses … almost polar opposites.”

Therefore, McGee’s copyright claim failed based on the absence of probative similarity.  The court added that McGee also could not establish substantial similarity.  In that regard, it pointed to additional differences in “format and tone,” and added that the themes of the two shows were in conflict.  While “The Music Factory of the 90’s” celebrated the pursuit of money and fame, “Class of 3000″ emphasized the love of music and creativity.

McGee reflects the difficulty in establishing copying infringement in this context.  Copyright owners must beware that basic concepts and ideas are not protectable, nor are routine storylines or stock characters.  Superficial similarities between creative works are often not actionable.

Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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March 21, 2012

Federal Circuit Rejects “Reasonable Manners” Test For Determining Scope of Standard Character Mark During Ex Parte Examination

Filed under: TM Registration — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:41 am

By Seth Appel, Trademark Attorney

Viterra Inc. applied to register XCEED in standard character form for “agricultural seed.”  The examining attorney refused registration, and the Board affirmed, based on likelihood of confusion with the following registered mark for “agricultural seeds.”

On appeal to the Federal Circuit, Viterra conceded that the goods were the same, but it argued that there was no likelihood of confusion as a result of differences in the marks.  Viterra contended that its proposed standard character mark should not be construed so broadly as to cover the distinctive form of the registered mark.  The court disagreed and affirmed the Board’s decision refusing registration.  In re Viterra Inc., 101 U.S.P.Q.2d 1905 (Fed. Cir. March 6, 2012).

As the court observed, an application to register a standard character mark is “without claim to any particular font style, size, or color.”  37 C.F.R. § 2.52(a).  Traditionally, the Board used the “reasonable manners” test to determine the scope of a standard character mark.  That is, it considered all reasonable depictions of the mark when comparing it to another mark to determine the presence or absence of likelihood of confusion.  However, the Federal Circuit rejected this “reasonable manners” test in Citigroup v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), an inter partes proceeding involving competing standard character marks.  In Viterra, the court held that the “reasonable manners” test is also improper when comparing a standard character mark and a word/design composite mark in the context of ex parte examination.

The court explained, quoting Citigroup:  “The T.T.A.B. should not first determine whether certain depictions are ‘reasonable’ and then apply the Du Pont analysis to only a subset of variations of a standard character mark.”  Rather, “the T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark.”  The court found no basis for limiting Citigroup to comparisons of word marks, and no basis for distinguishing between inter partes proceedings and ex parte examination.

In view of the foregoing, the court concluded, the Board was correct to find likelihood of confusion between the marks at issue.  After all, the applicant’s XCEED mark could be depicted as a capital “X” followed by “ceed” in small letters, making it similar to the registered mark.  Insofar as the T.T.A.B. applied the more restrictive and outdated “reasonable manners” test, it was harmless error.

Trademark users must remember Viterra when considering new marks, and trademark practitioners must keep Viterra in mind during clearance.  A registered word/design composite mark might create a conflict with a would-be applicant’s standard character mark – even if the applicant would never consider depicting its mark in that fashion.

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 Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.

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