IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- September 27, 2012


Table of Contents

Diller v. Barry Driller, Inc., USDC C.D. California, September 10, 2012
 Click here for a copy of the full decision.

  • District court preliminarily enjoins creator of internet site BarryDriller.com from continuing to use the name “Barry Driller” to market an internet streaming service competing with a similar service backed by plaintiff Barry Diller.
Plaintiff Barry Diller, the former Chairman and CEO of Paramount Pictures Corp and of Fox, Inc., is the current Chairman and Senior Executive of IAC/InterActiveCorp, a backer of Aereo, Inc., an internet-based broadcast television service operating in New York. Defendant Alki David is the founder of FilmOn.com, Inc., which provides a similar internet-based broadcast television service to Aereo. Alki created a website titled “Barry Driller” at the domain name barrydriller.com, which provided internet streaming services to compete directly with Aereo. The website featured a graphic of a fit, shirtless man holding a drill. Plaintiff sued Alki and his related companies for false endorsement under the Lanham Act and for state law violations of plaintiff’s right of publicity and sought a preliminary injunction to stop defendants from using the name “Barry Driller” in connection with their service.

The district court granted plaintiff’s motion for preliminary injunction, finding that plaintiff was likely to succeed on the merits of his claims because defendants’ use of the name “Barry Driller” created a strong likelihood of confusion. Plaintiff’s name was well known, especially among entertainment- and tech-savvy consumers, and defendants used an almost identical name to market a service very similar to the one sponsored by plaintiff. Defendants also intentionally used “Barry Driller” to evoke plaintiff’s identity and advertised their service in similar markets and through channels similar to Aereo’s.

Defendants argued that “Barry Driller” was a nominative fair use and a parody, which would defeat plaintiff’s Lanham Act claims, and that “Barry Driller” sufficiently transformed plaintiff’s name such that it did not violate plaintiff’s right of publicity. The court disagreed. First, “Barry Driller” was not a nominative fair use because defendants were not using plaintiff’s real name to refer to plaintiff. Rather, defendants added an “r” to plaintiff’s name and used it to refer to their internet service. Second, “Barry Driller” was not sufficiently a parody because there was nothing distinguishing plaintiff’s name from the source of the parody, either in the name “Barry Driller” or on defendants’ website. Instead, defendants used “Barry Driller” commercially to market their internet service. Third, defendants violated plaintiff’s right of publicity by using plaintiff’s name to market their internet service because defendants did not sufficiently transform plaintiff’s name to make it their own expression.

Because defendants’ continued use of the name “Barry Driller” created a likelihood of irreparable harm, and the balance of hardships and public interest factors weighed decisively in plaintiff’s favor, the court enjoined defendants from continuing to use the name “Barry Driller” in connection with their internet service.

Harter v. Disney Enterprises, Inc., USDC E.D. Missouri, September 20, 2012
 Click here for a copy of the full decision.

  • District court grants summary judgment in favor of defendant motion picture companies on plaintiffs’ copyright claims, finding no substantial similarity between protectable elements of plaintiffs’ story and defendants’ works.
Plaintiffs, authors of an illustrated children’s story, brought suit against defendants, motion picture companies, among others, for copyright infringement and civil conspiracy, alleging that two videos distributed more than a decade later infringed on the copyrights in plaintiffs’ story. The district court granted the Disney defendants’ motion for summary judgment, finding that the videos and screenplays were not substantially similar to any protected expression in plaintiffs’ story, and dismissing plaintiffs’ copyright claim, as well as the civil conspiracy claim.

Plaintiffs copyrighted their story in 1992 and 1993 under two different titles, Santa Paws: The Story of Santa’s Dog and Christmas Paws. Plaintiffs retained an agent to market the story who showed it to several entities, including a subsidiary of defendant Disney Enterprises, among others, but none of the companies went forward with producing a movie based on the book. In 2009 defendant Disney released a movie titled Santa Buddies: The Legend of Santa Paws and in 2010, another movie called The Search for Santa Paws. Plaintiffs asserted copyright infringement claims alleging that the movies were substantially similar to their copyrighted story. For the purposes of their motion for summary judgment, defendants concede both that plaintiffs own valid copyrights in their story and that defendants had access to the copyrighted material, leaving only the issue of whether substantial similarity of ideas and expression existed between the plaintiffs’ short story and the defendants’ videos or screenplays for those videos.

Applying the Eighth Circuit’s two-step test for analyzing the similarity between two works, which first analyzes extrinsically whether substantial objective similarities exist in the ideas in the works and then evaluates the expression of those ideas using an intrinsic or “ordinary, reasonable person” test, the district court concluded that neither the videos nor the screenplays were substantially similar to any copyrightable elements under both prongs of the test.

The court noted that some similarity of general ideas and specific details of those ideas existed between the works — the plots of the works involved some threat to the Christmas holiday or spirit and a talking Christmas dog with “Paws” in its name who saves the day; all the works feature characters including Santa, elves and other helpers, as well as an antagonist trying to ruin Christmas; the story and the videos take place, in part, at the North Pole, and all the works also use another American city or town as a second setting; the use of a magical icicle or ice crystals; the use of a Christmas tree (although used differently in the short story than in the movies); and some similar snatches of dialogue — but concluded that most of the similar elements between the works were not original or not copyrightable. For example, while the presence of a magical icicle or ice crystal is similar to both plaintiffs’ and defendants’ works, “the idea of magic in a Christmas story is not original, nor is the use of ice for that purpose original in a setting such as the North Pole.” Similarly, the idea of Christmas spirit — and the lack thereof — being reflected or embodied in an object (Christmas tree with lights that won’t light when the spirit is low in plaintiffs’ story and the magic icicle in the defendants’ movies) is not an original idea. The court also found that the short phrases of similar dialogue in plaintiffs’ story and The Legend of Santa Paws referenced the abstract and unoriginal idea of naming Santa’s dog “Paws” or “Santa Paws” and were fairly insubstantial when compared to the other dissimilarities in dialogue and plot between the stories. Other similarities, such as the presence of Santa, elves, and other helpers and the setting of the North Pole in a Christmas story, were standard to Christmas stories and constituted unprotecible “scènes à faire.”

Because the similarities in the works were at the most fundamental level of general plot idea (stories involving a threat to Christmas or the Christmas spirit and that the main protagonist, a talking dog, saves Santa or Christmas), which is not protectable, the court concluded that, based on an analysis of the objective similarities of the works, the ideas in defendants’ movies are not substantially similar to plaintiffs’ short story. Noting that it need not conduct an intrinsic analysis of these works, the court nonetheless held that even if a substantial similarity of ideas did exist, plaintiffs’ copyright claim would also fail under the intrinsic test because “no reasonable viewer of the defendants’ movies — or reader of their corresponding screenplays — would recognize them as a “dramatization or picturization of plaintiffs’ short story.”

After granting defendants’ motion for summary judgment on plaintiffs’ claim for copyright infringement, the court also dismissed plaintiffs’ civil conspiracy claims, finding that it failed as a matter of law because every other count in the complaint had been dismissed as to every defendant.

For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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