Table of Contents
Bouchat v. Baltimore Ravens Limited Partnership, USCA Fourth Circuit, December 17, 2013
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Fourth Circuit affirms grant of summary judgment in favor of defendants NFL and Baltimore Ravens, finding that use of team’s former logo incorporating plaintiff’s copyrighted work in stadium displays and film documentaries constituted fair use under the Copyright Act.
In this latest chapter in extensive copyright litigation over the Baltimore Ravens “Flying B” logo, Frederick Bouchat challenged the National Football League’s use of the logo in three videos featured on its television network and various websites, and the Baltimore Ravens’ display of images that include the logo as part of historical exhibits – a timeline, a highlight reel, and a significant plays exhibit – in the M&T Bank Stadium “Club Level” seating area. In prior lawsuits, the Fourth Circuit found that while the Ravens’ inaugural logo infringed on Bouchat’s drawing, the team’s use of the logo in other situations was non-infringing fair use. In this suit, the district court found that, in both cases, the defendants’ limited and substantially transformative use of the Flying B logo was non-infringing fair use under 17 U.S.C. § 107 of the Copyright Act. (Read our summary of the district court’s decision here.) The Fourth Circuit affirmed, concluding that the four nonexclusive § 107 factors supported a finding of fair use.
Under 17 U.S.C. § 107, the court must consider four nonexclusive factors in determining whether a use is fair: (1) the purpose and character of the use, (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.
The court initially addressed the purpose and character of the defendant’s use of the Flying B logo in three film documentaries. The essential inquiry under the first factor is whether the new work is transformative and the extent to which the use serves a commercial purpose. The court noted that the Flying B logo initially served as the brand symbol for the team, its on-field identifier, and principal thrust of its promotional efforts. In contrast, each of the videos used the Flying B as part of the historical record to tell stories of past drafts, major events in Ravens history, and player careers. The court found that, because the videos used the historical footage to tell new stories and not simply to rehash the seasons, they used the Flying B logo for its “factual content” and were transformative. The court noted that the exceptionally insubstantial presence of the Flying B logo in the videos further supported a finding of transformative use.
The court also noted that while there was no doubt that the NFL produced and distributed the videos for commercial gain, a factor that weighs against a finding of fair use, it cautioned that an overbroad reading of the commercial sub-prong would eviscerate the concept of fair use. According to the court, the vast number of fair uses occur in the course of commercial ventures –news reporting, comment, criticism, teaching, scholarship, and research – which are generally conducted for profit. Here, the court found that the “substantially transformative” nature of the use rendered its commercial nature largely insignificant. The court thus concluded that the first factor, the principal focus of the inquiry, counseled strongly in favor of fair use.
The court found that the remaining factors of § 107 did nothing to tilt the scale. The second factor, the nature of the copyrighted work, was neutral, because the NFL’s transformative use of Bouchat’s original drawing lessened the importance of the logo’s creativity. The court also found that the third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was given very little weight by the court, because although the NFL used Bouchat’s work in its entirety, the NFL had no choice but to film the whole logo in order to fulfill its “legitimate transformative purpose” of creating the historical videos at issue. The court also held that a transformative use renders market substitution less likely, and that the new transformative use is unlikely to supplant the market for the original. Consequently, the court found, in the aggregate, the four factors point in favor of a fair use finding.
Similarly, the court concluded that the use of the Flying B logo in certain historical displays located on the “Club Level” of the Ravens’ stadium qualified as a fair use. The court determined that the uses of the logo in the historical displays were not only transformative, but also fleeting, incidental, de minimis, and innocuous. The Flying B logo, as it was used in the Club Level displays, stated the court, was included merely as an incidental component of a broader historical narrative of the evolution of professional football in Baltimore. The court found that the insignificance of the Flying B logo – which was absent from large swaths of Baltimore football’s 100-year history – confirms the display’s transformative quality and militated in favor of a finding of fair use.
Leslie Klinger v. Conan Doyle Estate, Ltd., USDC, N.D. Illinois, December 23, 2013
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District court holds that various characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories that appeared in works first published in the United States prior to January 1, 1923, are in public domain and free for public use.
Plaintiff Leslie S. Klinger brought a declaratory judgment action against defendant Conan Doyle Estate, Ltd., seeking a declaratory judgment that various characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories were free for the public to copy without infringing Conan Doyle’s rights under the Copyright Act, 17 U.S.C. § 101 et seq. Sir Arthur Conan Doyle authored four novels and 56 short stories (the Canon) featuring the fictional characters of detective Sherlock Holmes and Dr. John H. Watson. The four novels and 46 of the 56 short stories were first published in the United States on various dates prior to January 1, 1923. The other 10 stories were published thereafter.
Klinger filed for summary judgment, seeking a determination that the public was free to use the characters, character traits, and story elements from Conan Doyle’s works because those elements have entered the public domain. Conan Doyle argued that because Sherlock Holmes and Dr. Watson were continually developed throughout the entire Canon, the copyright protecting the 10 stories should extend to the Sherlock Holmes and Dr. Watson characters and the story elements pertaining to those characters. The court held that Klinger and the public may use any story elements that were first introduced in the pre-1923 public domain stories without seeking a license.
The court then examined the 10 post-January 1, 1923, works to determine which portion of the Sherlock Holmes story elements originated in the post-1923 works. If the elements constitute “increments of expression” – the storylines, dialogue, characters, and character traits newly introduced by the 10 stories – then they are protected from unauthorized use by the Conan Doyle’s copyright in those stories.
Klinger admitted that the Sherlock Holmes story elements include elements first introduced in the copyrighted 10 stories. The post-1923 story elements pertain to the characters Dr. Watson and Sherlock Holmes and include: (1) Dr. Watson’s second wife; (2) Dr. Watson’s background as an athlete; (3) and Sherlock Holmes’ retirement from his detective agency. Klinger contended that the post-1923 story elements are events rather than characteristics of Dr. Watson and Sherlock Holmes and, as such, are not copyrightable. She also argued that any material first introduced in the 10 stories does not complete the characters of Sherlock Holmes or Dr. Watson and therefore does not qualify for copyright protection. Courts do not distinguish between elements that “complete” a character and elements that do not, however, and the case law instructs that the “increments of expression” contained in copyrighted works warrant copyright protection.
The Seventh Circuit had previously only applied the “increments of expression” test to derivative works. Conan Doyle argued that Sir Arthur Conan Doyle developed his characters throughout the entire Canon, and therefore no single work in the Canon is a derivative of another work. The court disagreed, finding that because the Canon consists of subsequent works that are based on material from a pre-existing work (Sir Arthur Conan Doyle’s first Sherlock Holmes story), the subsequent works in the Canon met the definition of derivative works and applied the increments of expression test.
Under the increments of expression test, the court found that, on the record before it, there was substantial evidence that the post-1923 story elements constitute “original expression” beyond what is contained in the public portion of the Canon, as it contained storylines, dialogue, characters, and character traits newly introduced in the 10 stories. Dr. Watson’s second wife and his athletic background, as well as Sherlock Holmes’ retirement, are a character, a character trait, and a storyline, respectively, that originated in the copyrighted 10 stories. While the court ruled that the pre-1923 story elements were free for public use, the court declined to grant summary judgment against the estate with respect to the post-1923 story elements.
Ross v. Roberts, California Court of Appeal, Second Appellate District, December 23, 2013
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California Court of Appeal affirms summary judgment in favor of rap musician William Roberts, who performs under stage name Rick Ross, finding that his use of name was sufficiently transformative as to be First Amendment-protected fair use, insulating him from a right of publicity suit brought by the notorious former cocaine dealer Ricky Ross.
Plaintiff-Appellant Ricky D. Ross, a notorious former criminal, brought this action against professional rap musician William Roberts (and related entities), alleging various claims including violation of Ross’s statutory and common law right of publicity, false advertising, unjust enrichment, unfair business practices, and misappropriation of name and identity.
Ross is the former head of a large criminal enterprise dealing cocaine in the 1980s, which earned him a fortune worth hundreds of millions of dollars. Ross was indicted and served time on drug trafficking charges and became somewhat notorious in that role. Defendant Roberts claimed that his stage name is a play on the phrase “big boss” and denied that his stage name is based on plaintiff’s name, despite using lyrics appearing to mimic Ross and containing fictional stories about running large-scale cocaine operations.
Although the trial court awarded summary judgment to defendant Roberts on statute of limitations grounds and laches, the appellate court affirmed on a separate basis: the court found that the First Amendment provided a complete defense to plaintiff’s right of publicity and related claims. Applying the test set forth by the California Supreme Court in Comedy III Production, Inc. v. Gary Saderup, Inc. 25 Cal. 4th 387 (2001), the court found that defendant’s work and use of the name in connection with his work was “transformative,” in that Roberts did not simply steal plaintiff’s likeness, name, or reputation to sell records, but made original artistic works incorporating fictional tales of drug dealing and other criminal exploits. According to the court, “Roberts’ music and persona are much more than literal depictions of the real Rick Ross,” and were thus completely protected by the First Amendment.
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