Super-Sweet Entertainment Law Outline
UNFAIR COMPETITION
I. UNFAIR COMPETITION
a. Ins v. AP
i. Basically, news gathering organizations are competing
1. INS steals news from bulletins and printing it as their own material.
ii.
iii. The AP says INS is stealing its news.
iv. Can the INS use the Ap’s “News” without giving credit to the AP?
1. ISSUE: Copying news that you didn’t generate, but it’s still news.
2. Copying news from bulletins and early editions legally obtained and printing as INS’s own material.
a. News is NOT copyrightable.
v. If it’s “Hot” news, then you can’t use it.
1. But, say, use the day after would probably be OK.
vi. When the rights or privileges of the one are liable to conflict with those of the other, each party is under a duty so to conduct its own business as not unnecessarily or unfairly to injure that of the other.
1. Majority opinion: quasi-property right = misappropriation.
a. Holmes: no property rights, but this is unfair trade and misrepresentation by not identifying the source or giving credit.
vii. The court was protecting the commercial value of the news.
1. INS was destroying AP’s commercial value.
b. Elements:
i. (1) Plaintiff spends time, money, etc.
ii. (2) Defendant takes it at little / no cost.
iii. (3) Plaintiff is injured by it.
1. These elements are limited to competitors.
a. Has to have commercial value.
b. And would drive plaintiff out of business.
iv. Holmes: there needs to be a disclaimer that this was the AP’s story
1. Harm: misappropriation of news.
v. Brandeis: you can’t “own” news
1. Ideas, news, are free to all
a. If you can’t own it, there is no basis for misappropriation.
c. Preemption
i. If you have a claim in state court, involving state law, but the subject matter tackles:
1. (1) on federal copyright law
2. (2) and it has the same protections of the Copyright Act (federal)
ii. I think it’s preempted.
iii. Photograph: is within copyright.
1. Is the action an infringement by the owner?
iv. MORE PREEMPTION
1. (1) Subject Matter Test:
a. Is the work at issue fixed in a tangible form and comes within subject matter of the copyright?
2. (2) Equivalency Test:
a. Is the state law equivalent to the copyright law-one that is infringed by mere act of reproducing, performance, distrubution, or display?
i. If there is an extra element-breach of contract or fiduciary duty, then it’s not copyright law.
d. Hot News Exception:
i. Elements (must prove all five)
1. (1) The plaintiff generates or collects information at some cost or expense.
2. (2) The value of the information is highly time sensitive
3. (3) The defendant’s use of the information constitutes free-riding on the plaintiff’s costly efforts to generate or collect it.
4. (4) The defendant’s use of the information is in direct competition with a product or service offered by the plaintiff.
5. (5) The ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.
ii. There is an important need to keep the incentive for news organizations to keep gathering news.
1. Without the incentive, our society might not be as informed.
iii. Page 714: Three more elements, “in addition to the elements of copyright infringement” that allow a “hot news” claim to survive preemption
1. (1) The time sensitive value of factual information
2. (2) The free-riding by the defendant, and
3. (3) The threat to the very existence of the product or service provided by the plaintiff.
e. Examples of Hot News
i. (1) Motorola Sport tracks paging devices giving realtime updates of NBA games via reporters watching games at various locations and sending information on computers à court held NOT hot news, so NBA action preempted and they couldn’t stop it.
1. NBA could prove 1 and 2, but not number the rest.
ii. (2) WGN broadcast rights to Cubs: you buy brownstone next to Wrigley Field, but camera and videotape and play live shot of one players on the web page. NOT free riding because you puts lots of money into it and it is not direct competition. Wgn would be preempted…doesn’t meet hot news exception.
iii. (3) Gay Olympics
1. Free ride on Committee work on Olympics.
a. Look to the expenditure of “labor, skill, and money by an entity” used to acquire meaning for the word.
b. So I think the Olympics could ban the use of the “Gay Olympics.”
II. TITLES
a. Copyright office does NOT give protection to titles.
b. Jackson v. Universal Int’l Pictures (California)
i. Plaintiff writes a play, hires a press agent to publicize.
1. Two week showing in Philly, 7 performances in NYC.
2. Basically, plaintiff needs to demonstrate secondary meaning.
3. “Public” is not a few.
ii. Court: title had a secondary meaning
1. Is the title closely associated with a literary work?
2. Does NOT have to be associated with the author (can be the holder, etc.)
iii. But how can we tell if it reaches a secondary meaning?
iv. And is there a likelihood of confusion?
1. (1) Secondary meaning
2. (2) Likelihood of confusion
v. An author does not have an inherent right in the title to his production.
vi.
c. Kirkland v. Nat’l Broadcasting Co.
i. This was the radio program “Land of the Lost.”
1. NBC has a children’s show called “Land of the Lost.”
2. Title NOT protected by copyright, only unfair competition.
a. Need:
i. (1) Secondary meaning
1.
ii. “Land of the Lost”
iii. Court looks to Restatement of Torts
iv. Analyze:
1. (1)
v. Basically, no court has ever granted a title copyright protection.
1. So theories of liability derive from passing off or unfair competition.
2. ELEMENTS OF TITLE MISREPRESENTATION:
a. (1) Must prove secondary meaning
i. Factors for secondary meaning:
1. (1) Length of time used
2. (2) Nature and extent of popularizing and advertising time
3. (3) Efforts made in promoting / public connecting the name with the work.
b. (2) Must prove likelihood of confusion.
i. Do not need proof of actual confusion.
ii. Factors to demonstrate likelihood of confusion:
1. (1) Degree of similarity between the designation and the TM or trade name in:
a. Appearance
b. Pronunciation of the words used
c. Verbal translation of the pictures or designs involved
d. Suggestion
2. (2) Theintent of the actor in adopting the designation
3. (3) The relation in use and manner of marketingbetween the goods or services marketed by the actor and those marketed by the other
4. (4) The degree of care likely to be exercised bypurchaser.
a. How smart / dumb are the purchasers.
c. (3) Plaintiffhas been damaged.
3. In “Land of the Lost” the products were not in competing markets and Plaintiff hadn’t used the title commercially for 25 years.
vi. Example: the 6 Million-Dollar Man stopped somebody from selling “Bionic” sneakers.
d. Defenses of Title Use
i. (1) Preemption
1. Must be within subject matter of TM law
2. And state law must try to restrain defendant (like copyright law?)
3. This is hard…usually titles withstand preemption challenges.
ii. (2) Generic Name / Real Names
1. Words in common use or constitute the generally accepted way something is called cannot be appropriated
iii. (3) Parody
iv. (4) Public Domain Works
v. (5) The First Amendment
vi. (6) Abandonment
1. This is a rebuttable presumption.
e. Rossner v. CBS, Inc.
i. This was the “Mr. Goodbar” case.
ii. Plaintiff basically doesn’t want defendant to be able to use the term “Mr. Goodbar”
1. Worried about confusion.
2. Plaintiff’s claim is simply that defendant, through their use of the word “Goodbar” in the title of their movie, are trading on Plaintiff’s reputation and good will generated from the success of her novel!!!
a. Because Plaintiff first came up with the term “Goodbar.”
iii. Problem: Mr. Goodbar was now associated with the actual killer!
iv. I think the court finds that use of the disclaimer would have prevented any confusion.
1. So disclaimers are good.
2. Court was worried about passing off / palming off.
a. But that doesn’t seem to happen here.
b. Also, Plaintiff didn’t go after the NY Times or the New Yorker when they used the term “Mr. Goodbar.”
v. So…
1. (1) Lanham Act I don’t think applies
2. (2) No Unfair Competition
a. There was no deception of the public (I think)
3. (3) I don’t think there was any anti-dilution.
a. There is no tarnishing or blurring.
vi. This case is similar to George Lucas and “Star Wars” RE: SDI.
f. Outside Outline:
i. Plaintiff authored “Looking for Mr. Goodbar” and sued over the use of the word “Goodbar.”
1. Defendant aired the TV movie with Goodbar in the title, begins where the novel left off.
ii. Plaintiff was aware of the growing common usage of Goodbar in papers, but thought they were distinguishable.
iii. Court ordered for disclaimers, but the defendant did NOT run them! They would have worked!
1. Common use of the word was weakening, and it harmed plaintiff’s efforts to demonstrate secondary meaning.
iv. Is the TV movie a sequal? No. Begins where the novel left off, same three main characters, but primary focus was on the detective.
1. Plaintiff has standing to bring the action, because she retained the rights to use of the title in movies.
g. Capital Films Corp. v. Charles Fries Productions, Inc.
i. “The Trial of Lee Harvey Oswald”
1. (1) Secondary Meaning
2. (2) Likelihood of Confusion
ii. Use the theory of Reverse Confusion:
1. The second user is going to be so popular that the original user will reap benefits from the second uder(?)…no
2. Reverse Confusion:
a. The first user is concerned that the second user will be so popular that the public will think the first user’s product is the second user’s (reverse confusion).
i. Different from the first user concerned people will think the second user’s work is the first user’s work.
iii. SO HERE:
1. Plaintiff is worried that the second film called “The Trial of Lee Harvey Oswald” will confuse consumers about the true origin of the first movie of the same name.
h. Preemption Article in Supplement
i. Part I: Definition of “Tangible Works”
1. Does it have the same subject matter of the Copyright Act?
a. Works of authorship fixed in any tangible medium of expression, including works that are recorded in some permanent form, such as books, tape recordings, films, and pictures.
2. 5 Specific Ways that the owner of a tangible work is granted the exclusive right to exploit the work (or is it equivalent to the Copyright Act?).
a. (1) To prepare derivative works (i.e. greatest hits album).
b. (2) To distribute copies by sale, lease, or other transfer
c. (3) To perform the tangible work
d. (4) To display the tangible work
e. (5) To reproduce the Tangible work (the most important one!).
ii. Part II: Essence of Sec. 301 Preemption: The Copyright Act provides that no state may provide protection (statutory or common law) for Tangible Works that are equivalent to the Exclusive Rights
iii. Part III: Nimmer Analysis:
1. The “extra element” test, the most used consideration / majority position used
a. That a state law relating to protection of a Tangible Work is preempted by the Copyright Act unless liability under the state law requires some “extra element” that goes beyond the Exclusive Rights. The extra element must distinguish from what copyright law would do. Additional elements are not preemptive-right of publicity.
b. Is news within the subject matter of the copyright statute? Yes and no. The argument can be made that the way you do your news could be protected. Does it copy the same thing as the copyright statute? It’s the unfair business practice that is the additional element to the Motorola case-time sensitive valuable information, free-riding from the defendant, threaten service offered by the Plaintiff.
iv. Titles:
1. Not likely to be protected under copyright law. They have to be fanciful. Notoriously you need surveys to prove that a title has acquired a secondary meaning. Something that is instantly recognizable
III. CHARACTERS
a. From the other outline…Can you protect a fictional character…are they copyrightable?
i. Generally NO, unless you have the following components:
1. (1) Was character as originally conceived and developed sufficiently developed for commercial copyright protection?
a. Extra dimension of cartoon / comic easier to protect than just a literary character
2. (2) If sufficiently developed, did the alleged infringer
a contract?
a. (a) Went through the different meetings between plaintiff and defendant.
i. Could defendant bind the TV studio? Did he have authority?
1. Defendant kept asking how much plaintiff wanted, ect.
a. There were negotiations, implying that defendant had authority (or apparent authority).
b. (b) Was there a meeting of the minds?
i. Using the conduct of the parties to show a contract / meeting of the minds.
c. Use evidence of the parties to show an implied contract
i. The idea submitter must show a certain number of elements.
d. Submitter’s expectations of compensation?
i. Can’t just blurt stuff out!!!
2. (2) Defendant’s Major Defenses
a. (1) Defendant lacked authority to bind
b. (2) No consideration
i. Also, plaintiff can’t just blurt out stuff and expect to be compensated.
3. (3) Theories of Agency
a. (a) Ostensible Authority
b. (b) Apparent Authority
v. CA Court:
1. The consideration is the service of providing the idea to the recipient.
vi. (2) Use of Plaintiff’s Material
1. Look at the “Substantial Similarity” argument
a. Was there some sort of use?
b. Plaintiff: Yes, yes there was.
c. Court: it was similar
i. Boats, scuba gear, gadgets
d. You do NOT have to show the same level of similarity in an idea case as you do in a TM case.
c. Other Outline:
i. How to protect your idea:
1. (1) In California:
a. Must “do the dance” before disclosure, make clear the offer / consideration to get implied-in-fact contract
i. Parties have laid out all of the elements.
b. Plaintiff must show:
i. (1) Evidence of the underlying agreement or contractual elements; and
ii. (2) Use of the Plaintiff’s idea.
iii. This creates scienter because the recipient knows you expect money for the disclosure.
2. (2) In New York
a. For misappropriation: test is (1) Novelty and (2) Concreteness
i. Is the idea novel? Most have been done before. There may be novel elements. Can still try to prove implied-in-fact contract: must also show novelty to the buyer
1. If novelty found, NY pays more (CA pays like a script writer).
ii. Donahue v. Ziv Televisoin
1. Plaintiff had an idea for a TV show, Defendant kind of uses Plaintiff’s pitch without paying plaintiff.
a. Defendant says idea for sea hunt was independently conceived.
2. This is a contract claim!
d. Ratification can also be used to show an implied contract.
e. Blaustein v. Burten
i. “Taming of the Shrew”
1. But defendant stole plaintiff’s idea to have Burton and Taylor as the stars.
a. He did what was required: he made a pre-conditioned element that he wanted to be the producer
i. But he was NOT given the opportunity to produce.
f. Statute of Limitations:
i. Begins to toll when a movie is first screened / premiered.
g. Elements For Submission of Ideas
i. (1) The idea discloser informed the idea recipient in advance of disclosure that he intended to disclose an idea. (you cannot just “blurt out” an idea and demand protection)
ii. (2) The idea discloser did not intend the disclosure as a gratuity, but rather expected to be paid in the event the idea recipient used the idea thus disclosed
iii. (3) In advance of disclosure the idea recipient reasonably understood that the idea disclsoser expected such payment if the idea were used
iv. (4) The idea recipient voluntarily permitted the disclosure of the idea to occur.
v. (5) The idea discloser in fact disclosed the idea to the idea recipient
vi. (6) The idea disclosed was one that had not in fact previously been considered by the idea recipient
vii. (7) The idea recipient in fact used the idea thus disclosed.
h. Yadkoe v. Fields (CA Law)
i. Basically, Plaintiff has a series of notes with Defendant which becomes an express contract
1. Plaintiff also sues under implied contract theory
ii. Defendant wanted the scripts “gratis”
iii. But gratis doesn’t forbid all contracts
1. It says that if plaintiff sends defendant a plot and defendant uses the plot, then the defendant owes the plaintiff money.
iv. ISSUE: could this be a contract of adhesion?
1. There is unequal bargaining power…
2. If he pays a paltry sum, seems more like an adhesion contract.
