TROUBLE FROM PEOPLE PORTRAYED IN YOUR WORK

As an entertainment attorney, I am often called upon to assist writers who have gotten themselves into trouble because they do not understand how their work may infringe the rights of others. A writer who learns the fine points of the law through trial and error is receiving an expensive education. Here is a brief explanation of how to protect yourself.

I. FICTIONAL CHARACTERS

If your script or film contains fictional characters -- characters from your imagination -- you generally do not need to obtain any permissions or releases. However, if there is a chance that the public could mistake your imaginary characters for real people, you could be liable if you have thereby infringed their rights.

You can protect yourself by making sure your fictional characters cannot be mistaken for real people. Give characters unusual names that no living individual would have. Check the phone book to see if any people with your character's name reside at the location portrayed in your story. If there is a person in that community with the same name or a similar one, consider changing the locale or setting the story in a fictional locale. Add a disclaimer at the beginning of the film stating that any resemblance to persons living or dead is purely coincidental.

If fictional characters are drawn from another's literary work, you might be infringing that author's copyright unless the work has gone into the public domain, or your use is considered a fair use. You may borrow personality traits, so long as you do not infringe another's copyright. The first author to create a hard-boiled private eye, for example, cannot prevent other authors from creating their own hard-boiled private eyes.

Characters that have a visual component, such as comic book characters, are more likely to be protected under copyright law. Moreover, if you borrow the name of someone else's character you may be infringing trademark rights they have in the character, and engaging in unfair competition.

As explained later, in some circumstances you may have the right to portray real-life individuals without their permission, especially if those persons are public figures or public officials.

II. FICTIONAL CHARACTERS BASED ON REAL INDIVIDUALS

A writer's imagination necessarily draws upon one's life experiences and people the writer has met. A writer can freely borrow ideas, historical facts, personality traits of characters, and themes from other copyrighted work without liability. These items are not copyrightable.

If a fictional character is loosely based on a real-life individual, and the public cannot identify the real-life individual from the context in which the fictional character is portrayed, there is little risk of liability. On the other hand, suppose you wrote a novel about the widow of a former American president assassinated in Dallas, and the widow character later marries a Greek shipping tycoon. Although, you have labeled the book a "novel," said that it is a work of fiction, and given the characters fictitious names, readers may nevertheless believe you are writing about Jackie Kennedy. If you defame her, or otherwise invade her rights, she may have a good cause of action against you. You can be liable for defaming an individual even if you do not name her.

An interesting case is Leopold v. Levin. The plaintiff, Nathan Leopold, pled guilty in 1924 to kidnapping and murdering a young boy. Because of the sensational nature of the crime, the case attracted international notoriety, which did not wane over time.

In 1956, Levin, the defendant, wrote a novel entitled Compulsion. The framework for the novel was the Leopold case, although Leopold's name did not appear in it. The book was described as a fictionalized account of the Leopold murder case. A motion picture based on the book was released with fictitious characters who resembled the actual persons from the case. The promotional materials referred to the crime but made it clear that the story was a work of fiction suggested by real-life events. Leopold sued for invasion of privacy. After the novel was published, but before the movie was released, Leopold published his own autobiography.

The court was faced with the issue of whether Leopold, who had fostered continued public attention after having engaged in an activity placing him in the public eye, had a right of privacy in a fictitious account of that activity, or in the use of his name in promoting such an account. The court found against Leopold, stating that books, magazines, and motion pictures are forms of public expression protected by the First Amendment. The court noted that while the book and movie were "suggested" by Leopold's crime, they were evidently fictional works. The novel and film depicted portions of Leopold's life that he had caused to be placed in public view. The court did not consider the fictionalized aspects highly offensive, which is the standard for determining invasion of privacy.

The court noted that a documentary account of the Leopold case would be constitutionally protected. Also, an entirely fictional work inspired by the case would be protected if matters such as locale were changed and the plaintiff was not identified.

III. PORTRAYING IDENTIFIABLE PERSONS

A person's right to privacy has to be balanced against other people's rights under the First Amendment. If Kitty Kelly wants to write an unauthorized biography about Frank Sinatra, she can do so without his permission. Likewise, Mike Wallace and his "60 Minutes" camera crew can film others without their permission. However, journalists' rights are not absolute. If Mike Wallace placed a hidden camera in a department store dressing room, he would be liable for damages for invading the privacy of customers.

Determining whether a filmmaker has infringed upon the rights of a subject who has not consented to be portrayed can be a complex matter. The status of the subject -- whether he is a public figure or public official, and whether he is alive or deceased -- may be important. Whether the activities portrayed are newsworthy may also be decisive. And, the manner in which a person's likeness is used -- whether in a film or on a coffee cup -- is relevant as well.

The most likely grounds upon which to sue for an unauthorized portrayal are defamation, invasion of privacy, right of publicity, and unfair competition. Let us consider each in turn.

A. DEFAMATION

Defamation is a communication that harms the reputation of another so as to lower him in the opinion of the community or to deter third persons from associating or dealing with him. For example, those communications that expose another to hatred, ridicule, or contempt, or reflect unfavorably upon one's personal morality or integrity are defamatory. One who is defamed may suffer embarrassment and humiliation, as well as economic damages, such as the loss of a job or the ability to earn a living.

The law of defamation can be very confusing because the common law rules that have developed over the centuries are subject to constitutional limitations. To determine the current law, one must read a state's defamation laws in light of various constitutional principles. For example, recent United States Supreme Court decisions have imposed significant limitations on the ability of public officials and public figures to win defamation actions. If a state's law is inconsistent with a constitutional principle, the law is invalid.

There are a number of defenses and privileges in defamation law. Therefore, in some circumstances a person can publish an otherwise defamatory remark with impunity. Why? Protecting a person’s reputation is not the only value we cherish in a democratic society. When the right to protect a reputation conflicts with a more important right, the defamed person may be denied a recovery for the harm suffered.

The most important privilege, from a filmmaker's point of view, is truth. If your remarks hurt someone's reputation, but your remarks are true, you are absolutely privileged. An absolute privilege cannot be lost through bad faith or abuse. So, even if you maliciously defame another person, you will be privileged if the statement is true. Truth is an absolute privilege because our society values truth more than a person's reputation.

Keep in mind that while truth is an absolute defense, the burden of proving the truth may sometimes fall on you. Thus, if you make a defamatory statement, you should be prepared to prove that it is true -- which may not be an easy task.

Another privilege is the conditional common law privilege of fair comment and criticism. This privilege applies to communications about a newsworthy person or event. Conditional privileges may be lost through bad faith or abuse. However, this privilege has been largely superseded by a constitutional privilege applied in the context of statements about public officials or public figures.

Public figures, such as celebrities, or public officials, such as senators, have a much higher burden in order to prevail in a defamation action. They must prove that the defendant acted with "actual malice." Actual malice is a term of art meaning that the defendant intentionally defamed another or acted with reckless disregard for the truth.

Plaintiffs often find it difficult to prove that a defendant acted with actual malice. That is why few celebrities sue the National Enquirer. To successfully defend itself, the magazine need only show that it acted without actual malice. In other words, the newspaper can come into court and concede that its report was false, defamatory, and the result of sloppy and careless research. But, unless the celebrity can prove that the National Enquirer acted with actual malice, the court must dismiss the case. Mere negligence is not enough to create liability when the subject is a public figure or a public official.

B. INVASION OF PRIVACY

The right of privacy has been defined as the right to live one's life in seclusion, without being subjected to unwarranted and undesired publicity. In other words, it is the right to be left alone.

Similar to defamation, the right of privacy is subject to constitutional restrictions. The news media, for example, is not liable for newsworthy statements that portray another in a false light unless the statements are made with actual malice. Unlike defamation, a cause of action for invasion of privacy does not require an injury to one's reputation.

Many defenses to defamation also apply to invasion of privacy. Truth, however, is not a defense. Likewise, revealing matters of public record cannot be the basis for an invasion of privacy action. Express and implied consent are valid defenses. If you voluntarily reveal private facts to others you cannot recover for invasion of your privacy.

Privacy actions typically fall into four factual patterns:

1.     Intrusion into One's Private Affairs

This category includes such activities as wiretapping and unreasonable surveillance. The intrusion must be highly offensive. Whether an intrusion is highly offensive depends on the circumstances. Most people would find it offensive to discover a voyeur peering through their bedroom window. On the other hand, a salesman knocking on your front door at dinner time may be obnoxious but his actions would not constitute an invasion of privacy.

2.     Public Disclosure of Embarrassing Private Facts

One who gives publicity to a matter concerning the private life of another is subject to liability for invasion of privacy if the matter publicized is highly offensive to a reasonable person, and if the matter is not of legitimate concern to the public, i.e., if the information is not newsworthy.

This type of invasion of privacy occurs, for example, where someone digs up some dirt on another person and publicizes it, but the information is not of legitimate interest to the public.

3.     Appropriation

An action for appropriation of another's name or likeness is similar to an action for invasion of one's right of publicity. An invasion of privacy action seeks to compensate the plaintiff for the emotional distress, embarrassment, and hurt feelings that may arise from the use of his or her name or likeness. A right of publicity action, on the other hand, seeks to compensate the plaintiff for the commercial value of exploiting his or her name or likeness.

As with the right of publicity, a person cannot always control another’s use of his name or likeness. While you can prevent someone from putting your face on a pancake mix box, you cannot stop Time magazine from putting your face on its cover if you have been involved in something newsworthy.

4.     False Light

Publicity that places a plaintiff in a false light will be actionable if the portrayal is highly offensive. This type of invasion of privacy is similar to defamation, but harm to a reputation is not required. For example, false light invasion of privacy could entail a political dirty trick such as placing the name of a prominent Republican on a list of Democratic contributors. Although, this person's reputation may not be harmed, he has been shown in a false light.

An interesting false light case is Spahn v. Julian Messner, Inc. Here, Warren Spahn, a well-known baseball player, sued over the publication of an unauthorized biography, alleging that his rights under New York's misappropriation (privacy) statute had been invaded. In the purported biography, the author took great literary license, dramatizing incidents, inventing conversations, manipulating chronologies, attributing thoughts and feelings to Spahn, and fictionalizing events. The invented material depicted the plaintiff's childhood, his relationship with his father, the courtship of his wife and important events in their marriage, and his military experience.

The defendant argued that the literary techniques he used were customary for books aimed at young people. The defendant never interviewed Spahn, any members of his family, or any baseball player who knew him. The author's research was comprised of newspaper and magazine clippings, the veracity of which he rarely confirmed.

The court concluded that the defendant invaded Spahn's privacy. The New York privacy statute protects a public person from fictionalized publication if the work was published with actual malice. Since the defendant writer invented large portions of the book, he obviously knew his statements were untrue. While Spahn could not prevent publication of an unflattering biography simply because he did not like its contents, this fictitious report masquerading as fact was not protected.

Next blog:  THE RIGHT OF PUBLICITY

Self Defense Seminar:

Date: May 21, 2013, New York

This seminar explains how writers and filmmakers can prevent problems from arising by properly securing underlying rights, and encouraging the other party to live up to agreements by adding performance milestones, default penalties, and arbitration clauses. This seminar is an all-day class with Mark Litwak. Attorneys may earn CLE credit. Excerpts from Mark’s last seminar in New York on financing films can be viewed at: Link

Volunteer Lawyers for the Arts presents Mark Litwak’s Self Defense Seminar:   Seminar info

Mark Litwak is a veteran entertainment attorney and Producer’s Rep based in Beverly Hills, California. He is the author of six books including: Reel Power: The Struggle for Influence and Success in the New Hollywood; Dealmaking in the Film and Television Industry; Contracts for the Film and Television Industry; and Risky Business: Financing and Distributing Independent Film. He is an Adjunct Professor at the USC School of Law and the creator of Entertainment Law Resources website. www.marklitwak.com

Self Defense Seminar in New York May 21, 2013

Tuesday May 21st from 9:30AM - 4:30PM

Mark will be returning to New York City on May 21st to present his Seminar Self Defense for Writers and Filmmakers under the auspices of Volunteer Lawyers for the Arts

Writers and filmmakers need to understand their legal rights and how to defend themselves from those who may seek to exploit them. Production companies and distributors often know all the tricks of the trade, while writers and filmmakers know little about how to protect themselves. 

  

This seminar explains how writers and filmmakers can prevent problems from arising by properly securing underlying rights, and by encouraging the other party to live up to agreements by adding performance incentives, default penalties, and alternative dispute resolution clauses. In the event of a dispute, participants learn what remedies are available to enforce their rights. 

  

Related topics include:

• creative approvals
• typical compensation and terms of studio contracts
• merchandising deals
• negotiating tactics and strategies 

Extensive handouts (see below) will be made available.  

Where:
Proskauer Rose LLP
11 Times Square, New York, NY

Space is Limited. Please register early if you want to attend.

To Register

Sherlock Holmes and the Case of the Public Domain

In a suit filed recently in federal court in Chicago[1], a top Sherlock Holmes scholar alleged that many licensing fees paid to the Arthur Conan Doyle estate have been unnecessary, since the main characters and elements of their story derive from materials in the public domain. The suit was brought by Leslie S. Klinger, the editor of the 3,000-page "Annotated Sherlock Holmes" and other Sherlock Holmes-related books. It stems from his book "In the Company of Sherlock Holmes," a collection of new Sherlock Holmes stories by various authors, edited by Klinger and his co-editor Laurie King to be published by Pegasus Books.

The creator of Sherlock Holmes was Arthur Conan Doyle. He published most of his Sherlock Holmes stories from 1887 to 1927.  One might think that Sherlock Holmes is now in the public domain and any writer could freely borrow his character for inclusion in their own story.  However, some of Doyle's stories were published in periodicals as late as 1927, they may be within the protection of U.S. copyright laws. Works published before 1923 are most likely in the public domain, at least under U.S. law. For those stories published after January 1, 1923, they could remain protected until 2023.

According to the lawsuit all the Sherlock Holmes stories entered the public domain under the laws of the United Kingdom and Canada in 1980. However, with the passage of the U. S. Copyright Act of 1976 theauthor of a work that had passed into the public domain in the United States, or his heirs, were entitled to restore the work to copyright in the United States under certainconditions. In 1981, Dame Jean Conan Doyle, the last surviving child of Sir Arthur Conan Doyle, applied for registration of the copyright to "The Case-Book of Sherlock Holmes," a collection of stories. This workis comprised of 12 stories that were first published in various periodicals between 1921 and 1927, and thecollection was first published as a book in the United States in 1927.

The complaint asserts that the Doyle estate sent a letter to Pegasus Books threatening to prevent publication of "In the Company of Sherlock Holmes" unless it was paid a license fee. Kingler's prior publisher, Random House, had reluctantly paid $5,000 fee for an earlier Klinger collection he edited titled "A Study in Sherlock," even though Klinger believed he was not legally required to do so. The suit asks the court to make a declaratory judgment, establishing that the basic "Sherlock Holmes story elements" are in the public domain under U.S copyright law. Klinger claims that the stories in his new collection avoided drawing on copyrighted elements introduced in any of the Holmes stories published after January 1, 1923.

In a 2004 decision, a U.S District court judge Naomi Reice Buchwald determined that of Doyle's 60 Sherlock Holmes stories, nine might still be under copyright.[2]Although the character of Sherlock Holmes is in the public domain, various storylines, dialogue and characters that first appeared in these nine stories could be protected under U.S. copyright law. A copyright for a derivative work based on a prior work does not create copyright protection retroactively for the underlying work but can protect new material that has been added.

Sherlock Holmes continues to be an enormously popular character, even though he is 125 years old. He was recently featured in two Warner Brother films, the BBC's "Sherlock," and the television series "Elementary." The most recent Warner Brothers film "Sherlock Holmes: A Game of Shadows," starring Robert Downey Jr., had an international box office gross of $543 million from distribution in more than 50 countries.

The case raises the issue of which elements of the Sherlock Holmes stories are in the public domain, and which may remain under the protection of copyright law. Copyright can sometimes, but not always, protect characters and plot. Recognition of copyright protection for fictional characters goes back to Judge Learned Hand, who suggested that characters might be protected, independent from the plot of a story. He wrote "It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinct." So, while a writer cannot secure a monopoly on hard-boiled private eyes, one could protect a finely drawn character like Sam Spade.

While plots can be protected, stock scenes cannot. The doctrine of scènes à faire excludes from copyright protection scenes that flow from common unprotectable ideas. These would include "thematic concepts or scenes which necessarily follow certain similar plot situations" and ordinary literary incidents and settings which are customary for the genre. Thus, a writer cannot preclude others from using such common devices as a car chase or cattle drive in their stories.

The situation becomes even murkier when one considers that the Sherlock Holmes stories are subject to a confusing web of differing copyright laws across the globe.  There is no such thing as an "international copyright" that will protect an author's work everywhere.  Protection against unauthorized use in a particular country depends on the laws of that country. In other words, Copyright law is applied territorially by every country within its borders. Thus, the duration of copyright protection differs from country to country. Each country enforces its own laws, irrespective of the nationality of the author, or where the work was created or first published. The United States has joined several international copyright conventions to protect American works from infringement in foreign countries. These accords essentially provide for reciprocity of treatment for authors. For example, France agrees to protect the works of American authors in France. In return, the United States protects the work of French authors in the United States.

This means that the United States will protect a French author in the United States in the same manner and extent as the United States protects American authors. It does not mean that French authors will have the same rights in the United States that they have in France under French law. Thus, it is often said that copyright laws are territorial in their application. French law applies in France; American law applies in the United States. This application can produce unexpected results, because American copyright law and French copyright law are quite different. American law focuses on economic rights while French law protects author's creative rights. The issue of whether a work is in the public domain can vary from jurisdiction to jurisdiction, because each country applies its own laws. This poses a potential minefield for publishers of works with international appeal.

U.S. law recognizes the work-for-hire doctrine under which the "author" of a work can be the employer of an artist, not the artist himself. Few countries recognize this doctrine. On the other hand, some countries have doctrines that do not exist under U.S. law. France expressly recognizes the moral rights ("droit moral") of authors. U.S. copyright law only recognizes moral rights in the realm of fine art. Moral rights prevent others from changing the author's work (the right of integrity), or removing the author's name from the work (the right of paternity), even if the author has sold the work and the copyright to it.

Under French law, the rights of integrity and paternity are perpetual, inheritable, inalienable and imprescriptible. Thus, the heirs of an artist can object to the use of their ancestor's work, even if that work's copyright has expired.

In Huston v. Turner Entertainment,[3] the late American director John Huston was determined by a French court to be the author of the American film "The Asphalt Jungle." Under American law, Huston's employer was the author or owner. When Turner Entertainment which had acquired the film, sought to distribute a colorized version of it in France, over French television Channel 5, Huston's heirs initiated an action in the French Courts under the French moral rights law, seeking an injunction and damages against Turner and Channel 5. 

The French Supreme Court ruled that the transformation of the work from a black and white film to a colorized version was a breach of Huston's moral rights, even though these rights were not recognized in the United States. It did not matter that Huston was a U.S. citizen directing a movie for a U.S. company (MGM), which was shot on the MGM lot in Los Angeles. Moreover, the contract with Huston granted MGM all rights, and provided that American law would govern any dispute. France's highest court found for Huston's heirs on the grounds that French moral rights laws may not be violated in France regardless of the terms of a contract made elsewhere. The court held that it was against public policy to permit foreign law or foreign contracts to change the French system of moral rights within France.  Ultimately, the French courts entered judgment against Turner Entertainment for 400,000 francs and against French Channel 5 for 200,000 francs, and prohibited distribution of the colorized film in France.  

So, while Sherlock Holmes is a brilliant detective, even he may find it difficult to sort out the conflicting copyright laws of different nations.

---

[1]Klinger v. Conan Doyle Estate, Ltd., 1:13- cv-01226, U.S. District Court, Northern District of Illinois (Chicago).

[2] Pannonia Farms, Inc.,   v   USA Cable, 2004 U.S. Dist. LEXIS 23015; 72 U.S.P.Q.2D (BNA) 1090

 [3] Huston v. Turner Entertainment, French Court of Cassation, 1991, cited in article "International Copyright Litigation in U.S. Courts: Jurisdiction, Damages and Choice of Law" by Lionel S. Sobel; Emerging Issues in Intellectual Property Practice, CEB Program Handbook, p. 83, April 1994, California Continuing Education of the Bar.

Mark Litwak named to Southern California Super Lawyer list

Mark Litwak has been named to the Southern California Super Lawyers list as one of the top attorneys in Southern California for 2013.  No more than 5 percent of the lawyers in the state are selected by Super Lawyers.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a rigorous multi-­‐phased process that includes a statewide survey of lawyers, an independent research evaluation of candidates, and peer reviews by practice area.

The Super Lawyers lists are published nationwide in Super Lawyers magazines and in leading city and regional magazines across the country. Super Lawyers magazines also feature editorial profiles of attorneys who embody excellence in the practice of law. For more information about Super Lawyers, go to superlawyers.com.

The first Super Lawyers list was published in 1991 and by 2009 the rating service had expanded nationwide. In February 2010 Super Lawyers was acquired by Thomson Reuters the world’s leading source of intelligent information for business and professionals. This is the fourth time that Mark Litwak has been included in the Southern California Super Lawyer Edition. 

Seminar Clips Now Online    

Clips from Mark's seminar last May  for Volunteer Lawyers for the Arts in New York are now on-line for public viewing at YouTube. 
Link to Videos

The clips cover the following topics:

1)     Termination clauses, Performance Milestones, and Sales Agents
2)     Importance of E & O insurance 
3)     Film Markets  
5)     Why Festivals are Important
6)     The Risky Nature  of Filmmaking 
7)     Importance of Chain of Title
8)     Home video Deals      

Sundance 2013

As Sundance 2013 launches, it is a good time to review how well last year's titles performed.  Indiewire recently published a review by Peter Knegt that listed the 40 films in Sundance that were acquired for distribution last year. Of that slate, only three films grossed more than $6 million at the domestic box office. Those films were Beasts of the Southern Wild, Arbitrage, and The Words.

Many of last year's most successful indie films did not premiere at Sundance. 14 indie films surpassed $6 million mark. Some of these titles included The Best Exotic Margiold Hotel (Fox Searchlight) - $46,385,112, Moonrise Kingdom (Focus Features) - $45,512,466, Silver Linings Playbook (Weinstein Company) - $28,682,072, The Master (Weinstein Company) - $15,956,662, and Friends With Kids (Roadside) $7,251,073. And, the right-wing attack documentary 2016 Obama's America (Rocky Mountain) grossed $33,449,086.    

Thus, for those filmmakers whose work was not accepted by Sundance, all is not lost. I just returned from the Palm Springs International Film Festivalwhere I saw many great films including Jackpot, 80 Million, Beware of Mr. Baker, A Royal Affair, War Witch, and Kon-Tiki. Palm Springs is one of the largest film festivals in North America, welcoming 135,000 attendees each year for its lineup of new and celebrated international features and documentaries. The festival is especially known for screening many of the Academy Award nominees for best foreign language film. This year the festival screened 8 of the 9 films on the shortlist of films competing for Best Foreign Language Film at the 85th Academy Awards. 

SXSW has also become a magnet for industry insiders. Last year 132 features screened, with 74 world premieres. At least three films shown there were acquired: Girls Against Boys(Anchor Bay),The Tall Man(Image), and Gimme the Loot (Sundance Selects). 

Mark joins faculty at U.S.C Gould School of Law

Mark  has  joined the adjunct faculty at the University of Southern California Gould School of Law where he is teaching a class titled Legal Issues in the Motion Picture Industry.  The class is one of the key courses in the school's Certificate in Entertainment Law curriculum.  Mark has previously taught entertainment law courses at Loyola Law School and U.C.L.A.  The U.S.C. Gould School of Law is considered one  of the top law schools in the nation. 

HOBBIT TITLES: AN UNEXPECTED JOURNEY IN CONFUSION

Warner Brothers, New Line, and its affiliates (“Plaintiffs”) recently achieved a rare courtroom victory by obtaining a court order restraining distribution of a film they claimed unfairly competed with one of its titles. The target of their ire was The Global Asylum's ("Asylum") film The Age of Hobbits. Asylum was set to release its film on December 11, 2012, three days before New Line rolled out its film “The Hobbit: An Unexpected Journey.”  New Line's film revolves around the Hobbit characters, which first appeared in J.R.R. Tolkien's 1937 novel, The Hobbit, and were later in his The Lord of the Rings book trilogy, and the basis for the hit movie trilogy Lord of the Rings, which earned $3 billion dollars at the box office. New Line’s film is the first in a series of three films, all shot in New Zealand by Sir Peter Jackson, produced at a reported cost of $500 million dollars, and set to be released over the next few years.

New Line’s film had its world premiere in Wellington, New Zealand, on November 28, 2012 and has been the subject of intense promotion and advertising. I was in Wellington right before the world premiere and was surprised at the massive and ubiquitous nature of the promotion across the city. Not only were Hobbit characters placed on buildings, but museum stores and numerous other outlets carried movie merchandise. Tourism New Zealand spent $10 million dollars promoting the trilogy. The promotion began when I boarded my Air New Zealand flight to Wellington and was delighted to watch the most entertaining in-flight safety video I have ever seen. It starred Tolkien elves, dwarves, Hobbits, and a wizard. The video has become an online hit viewed by millions http://www.youtube.com/watch?v=XCbPFHu3OOc. The carrier has even rebranded itself the “Airline of Middle Earth,” and plastered a plane with images from the film.

Asylum's film, on the other hand, is a low budget indie film reportedly made for $2 million dollars. Asylum claimed that the word "Hobbits” as used in its film did not refer to the fictional Tolkien creatures, but to a human sub-species whose skeletons were discovered in Indonesia in 2003. In Indonesia, archaeologists discovered a human sub-species with the Latin name Homo Floresiensis, which they nicknamed “hobbits” because of their small stature.

The legal dispute, in its simplest terms, comes down to this. Asylum claimed it had the right, under the First Amendment, to make a movie about ancient Indonesian people and refer to a name commonly used to describe the short-statured ancients in its movie title. Plaintiffs, on the other hand, asserted that Asylum infringed on their trademarks and tried to ride on the coattails of its massive promotional campaign and trick moviegoers to purchase the Asylum movie, thinking they are buying the Warner/New Line film.

On August 31, 2012, Plaintiffs sent Asylum a cease-and-desist letter demanding that it refrain from using the “Hobbit” Marks. The parties then discussed Asylum’s asserted fair use defense and possible changes to the title, design, and promotional materials. Asylum changed the design of its promotional materials, but refused to remove the word “Hobbit” from the film title for the domestic release of the picture.

On November 7, 2012, Plaintiffs filed a complaint against Asylum for trademark infringement, false designation of origin, trademark dilution, false advertising, and unfair competition. Then, approximately three weeks before the scheduled release of the Asylum picture, Plaintiffs filed an application seeking a temporary restraining order stopping the release of the Asylum film.  

As most movie aficionados know, there is a long history of independent filmmakers trying to cash in on viewer interest in topics made popular by the major studios. Roger Corman produced Black Scorpion, which imitated the Batman movies, Forbidden World, a knockoff of Alien, and Piranha, which borrows liberally from JAWS. Asylum has produced a number of low- budget films that resemble major studio releases. The company made a low-budget version of H.G. Wells' The War of the Worlds, which was released the same year as Steven Spielberg's film based on the same 1898 public domain book. Blockbuster reportedly ordered 100,000 copies of the Asylum film, far more than it had for any of Asylum’s previous titles.   Seeing how profitable such films can be, Asylum produced several low-budget knockoffs, sometimes called mockbusters, including Transmorphers, Almighty Thor, Abraham Lincoln vs. Zombies, Snakes on a Train, and Paranormal Entity.

The major studios were not amused, but it was questionable whether they could legally stop Asylum. 20th Century Fox threatened legal action over the release of The Day the Earth Stopped, a film similar to The Day the Earth Stood Still.  Last May, Universal Studios filed suit against Asylum over their film American Battleship, claiming infringement of their movie Battleship. Asylum then changed the title to American Warships.

            For the most part, Asylum has been successful in releasing its pictures and defending them from legal assault. The company claims that it has released more than 150 films and has only been sued twice for trademark infringement. One case was settled, and Asylum prevailed in the other.

Asylum's legal success involved the film Haunting of Winchester House. Asylum was sued by the owners of the Winchester Mystery House, a popular tourist attraction in San Jose that consists of a 160-room Victorian-style mansion as well as a museum, gift shop, and café. The attraction is billed as the world's most haunted house. Sarah Winchester, according to legend, created this mansion to fend off ghosts.

The owners objected to Asylum's plan to produce and market its movie, which allegedly was based on a "terrifying true story." When Asylum asked for permission to film at the Winchester Mystery House, the owners informed Asylum that they had signed a contract with another producer for exclusive rights to the Winchester story.

The Asylum movie begins with a shot of a Victorian-style structure, but not the actual Winchester Mystery House. The movie includes the ghost characters of Sarah Winchester, her adolescent daughter, and her brother, who was deaf and could not speak. These characters, as well as the ghosts of those killed by Winchester guns, haunt Sarah Winchester’s home. However, the real Sarah Winchester did not have an adolescent daughter or a brother who was deaf and unable to speak.

The trial court dismissed the case against Asylum on summary judgment. On appeal, the appellate court agreed, stating that in trademark infringement cases involving First Amendment concerns, the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interests of filmmakers. The owner of a trademark does not have the right to quash an unauthorized use of its mark by another who is communicating ideas or expressing points of view.

However, with its Hobbit movie, Asylum apparently crossed the line. So the question arises, where exactly is that line? How closely can a filmmaker imitate another work or title without having a judge halt its distribution?

It is rare for a court to restrain distribution of a film especially when copies have already been shipped. Films, like newspapers and books, are protected expression under the First Amendment. A party seeking a preliminary injunction must show that it is likely to succeed on the merits and will suffer irreparable harm if the relief is not granted.  

A basic principle of copyright law is that ideas, themes, facts, subject matter, and historical incidents cannot be copyrighted. Anyone can write a book about George Washington, and they can even borrow facts from prior books without infringing those authors’ copyrights. Moreover, film titles generally cannot be registered as trademarks. Only a distinctive title to a series of books, periodicals, newspapers, or television programs like Bonanza could be registered. The reason is that trademarks are used to identify the origin of goods or services. Single books or films are one-offs. Their titles describe that particular work, not a series of works. Courts can, however, protect titles from confusingly similar uses, under the law of unfair competition, if the title has acquired a secondary meaning. A secondary meaning is when the title is sufficiently well known, that consumers associate it with a particular author’s work.

While courts are very protective of filmmaker's First Amendment rights, the law is also concerned about protecting consumers from being misled about the origin of products, which is what the laws of unfair competition and trademark address.  

There have been a number of cases in which courts have wrestled with a conflict between the freedom of expression of a filmmaker and the owners of trademarks and other rights. A commonly cited case is Rogers v. Grimaldi, which Asylum relied upon in its defense.  In that case, Federico Fellini conceived, co‑wrote, and direct­ed a film entitled "Federico Fellini's `Ginger and Fred'." The movie was a fictional work about two re­tired dancers. The dancers made a living in Italian cabarets imitating Fred Astaire and Ginger Rogers, thus earning the nickname "Ginger and Fred." The story was a satire about the world of television. According to Fellini, the characters did not resemble or portray Fred Astaire and Ginger Rogers. However, Ginger Rogers brought suit, claiming that Fellini violated her rights of privacy and publicity. Her complaint alleged that the defendants violated her rights by creating the false impression that the film was about her or that she sponsored, endorsed, or was involved in the film, and that it violated her right of publicity, and defamed her by depicting her in a false light.

            The district court decided that Fellini’s movie was a work protected under the First Amendment, and that a trademarked term could be used in the title of an artistic work if the use of the term has some artistic relevance to the work and does not explicitly mislead consumers as to the source and content of the work.

               The Court of Appeals affirmed the lower court, explaining that movies, plays, books, and songs are all works of artistic expression and deserve protection, even though they are also sold in the commercial marketplace and thus can be the subject of consumer deception. Consequently, when the title of a movie or a book has acquired secondary meaning—that is, when the title is sufficiently well-known, that consumers associate it with a particular author’s work—the holder of the rights to that title can prevent the use of the same or confusingly similar titles by other authors.

            The court concluded that filmmakers can use a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to its content. The court also held that Oregon law on the right of publicity does not bar the use of a celebrity’s name in a movie title, unless the title was “wholly unrelated” to the movie or was “simply a disguised commercial advertisement for the sale of goods or services.”

            Other cases have given less weight to the First Amendment rights of filmmakers. In American Dairy Queen Corp. v. New Line Productions, Inc., the defendant produced and was preparing to release a film entitled Dairy Queens, which was described as a mockumentary satirizing Minnesota beauty contests. The plaintiff was the Dairy Queen ice-cream chain, which claimed trademark infringement and dilution of its trademark. The district court found that the likelihood-of-confusion factors weighed in favor of the plaintiff. Then, it considered whether the defendant’s First Amendment interests were sufficient to outweigh the plaintiff’s trademark interests in its Dairy Queen trademark. Ultimately, the court found that because other alternative titles like Dairy Princesses or Milk Maids were available, “the balance between the public’s interest in free expression and its interest in avoiding consumer confusion and trademark dilution tilts in favors [sic] of avoiding confusion and dilution.” Dairy Queen Corp. won because the court distinguished  Rogers v. Grimaldi on the grounds that the Rogers case involved a title that directly referred to the content of the film – performers known as Ginger and Fred. On the other hand, defendant’s film was about beauty pageants in Minnesota, without any  connection to plaintiff's ice cream stores. The Dairy Queen decision has been widely criticized.  Moreover, there are many cases that stand for the principle that filmmakers can refer to trademarks in their film, provided they do not do so in such a manner as to mislead moviegoers that the trademark owner is somehow affiliated or endorsing the picture.

            In Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., the defendant exhibited a pornographic movie, "Debbie Does Dallas," which portrayed a "Texas Cowgirl" engaged in sex acts. The character wears a uniform strikingly similar to that worn by the Dallas Cowboys Cheerleaders. Ads for the movie showed the character in the uniform, and included such captions as "Starring Ex-Dallas Cowgirl Cheerleader Bambi Woods." In fact, Bambi Woods had never been a Dallas Cowboys Cheerleader.

            The Dallas Cowboy Cheerleaders brought suit, alleging that they had a trademark in the particular combination of colors and the design of their uniforms. The uniform in which they appear and perform consists of a blue bolero blouse, a white vest decorated with three blue five-pointed stars on each side of the front of the vest and white fringe at the bottom of the vest, tight white shorts with a belt decorated with blue stars, and white boots. The trademark was not registered at the time, although Plaintiff contended that it was protected as a common law trademark.

            The defendant contended that the film was a parody or satire on female cheerleaders and was protected expression under the First Amendment. Moreover, the defendant claimed that no one could rationally believe that the film originated or was associated with the actual Dallas Cowboy Cheerleaders.

            The court disagreed and issued an injunc­tion against further distribution of the film. The court found that the association with the Dallas Cowboy Cheerleaders, both in the film and in the advertising, had the single purpose of exploiting the Dallas Cowboy Cheerleaders' popularity in order to attract an audience to view sex acts in the movie.

            Then there is the Agatha Christie case. Casablanca Records produced a film titled “Agatha” about the famous mystery writer Agatha Christie. The story is a fictionalized account of an 11-day disappearance of Christie in 1926. Christie is portrayed as an emotionally unstable woman who engaged in a sinister plot to murder her husband’s mistress. The heir to Christie’s estate brought suit to enjoin Casablanca from distributing the movie, alleging unfair competition and infringement of the right of publicity.

During her life, Agatha Christie agreed to have her name used in connection with various motion pictures and plays based on her books. Her heir alleged that Casablanca’s use of the name "Agatha" and "Agatha Christie" would cause confusion in the minds of the public in general, and Agatha Christie readers in particular, by creating the impression that the movie and novel were authorized or even written by Ms. Christie. The court, however, summarily dismissed this claim, without much explanation other than finding that the heir "can prove no set of facts in support of [this] claim which would entitle [them] to relief.”

These cases were decided by different judges, under different state laws, and federal and state laws have evolved over time. Still, it is difficult to distinguish how the use of the word “Agatha,” is not likely to confuse moviegoers about the origin of the film about her, but the use of the word “Hobbit” is likely to confuse moviegoers about the source of Asylum’s movie.

            The judge in the Asylum case seemed to be greatly influenced by Plaintiffs’ data showing that Asylum's title was likely to mislead moviegoers about its movie. Plaintiffs presented evidence from a weekly tracking study conducted by Nielsen National Research Group (“Nielsen”) in which 30 to 40 percent of survey respondents indicated confusion about the source of “Age of Hobbits.” The survey included 1200 respondents divided into two groups. The Test Group was shown an image of the “Age of Hobbits” poster while the Control Group was shown the same poster with an alternative title. Thirty percent of those in the Test Group who had an opinion about the source of “Age of Hobbits” (about 200 respondents) said they believed the movie was made or distributed by Plaintiffs. On the other hand, only 6 to 14 percent of the respondents in the Control Group, who were shown the movie poster “Age of Java Men,” associated the film with Plaintiffs.

            The court also mentioned that Asylum's release of its film three days before the release of the Plaintiff's film demonstrated intent to capitalize on the publicity surrounding Plaintiffs’ film, and its similar artwork and prominent use of the trademark showed intent to deceive.