March 2013 / The New York County Lawyer 15
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Intellectual Property (Continued From Page 1)
I’m tiptoen,’ to keep flowin’/I got it locked up like Lindsay Lohan.” In addition, the court also found that the use was barred by the incidental use exception to a §§ 50-51 claim, as Lohan’s name appeared in only one of 104 lines of the song and was not in the song’s title or refrain. In January of this year, a California State Court in Spitz v. Samsung Elecs. Am., Inc.,7 dismissed several current and former Olympic athletes’ right of publicity claims for use of their images and biographical data in a Facebook app. The Olympians asserted that they did not authorize Samsung’s use of their
Ethics Hotline The Committee on Professional Ethics accepts both written and telephone inquiries on ethics matters and provides advisory opinions. For additional information, call the members listed below. March 1-15 Bruce Handler 212-508-9372 March 16-31 Sarah Jo Hamilton 845-412-5011 April 1-15 Mark Bower 212-240-0700 April 16-30 Malvina Nathanson 212-608-6771 Please Note: Assignments are subject to change. Questions to the Hotline are limited to an inquiring attorney’s prospective conduct. The Hotline does not answer questions regarding past conduct, the conduct of other attorneys, questions that are being litigated or before a disciplinary committee or ethics committee, or questions of law. This notation shall not be construed to contain all Hotline guidelines. For a full discussion of Ethics Hotline guidelines, please see the article below, “Guidelines on NYCLA’s Ethics Hotline,” published in the September 2006 issue of New York County Lawyer.
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biographical information in the Facebook app. Samsung filed an anti-SLAP motion, seeking to strike the lawsuit, arguing that the Olympians’ biographical data was protected First Amendment speech. Samsung claimed that the app was simply an entertaining way for users to discover and explore their connections to Olympic athletes, and, just like ideological and political speech, was protected by the First Amendment. The Court held that Samsung’s placement of its mark on the app pages was not sufficient to show that a commercial transaction was being proposed. And even if it did, the commercial message was “intertwined and overwhelmed” by the non-commercial aspects of the message. In June of last year, the U.S. District Court for the Southern District of New York in Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc.8 found that the use of a knock-off Louis Vuitton bag in a humorous scene in the movie Hangover II satisfied the Artistic Relevance test, and thus was non-infringing. In the scene, the character Alan, played by Zach Galifianakis, says to the character Stu, played by Ed Helms, when Stu moves Alan’s shoulder bag off of a chair, “Careful... that is a Lewis Vuitton.” In reality, it turns out that the piece of luggage in issue was actually made by a company named Diophy and is described by the court as a “knock-off” of Louis Vuitton’s “Keepall” bag. Louis Vuitton brought its action against Warner Brothers for, among other things, trademark infringement under the Lanham Act. In opposition to Warner Brothers’ motion to dismiss based upon the Artistic Relevance test, Louis Vuitton argued that the use was explicitly misleading as to source, as consumers will be confused into believing that the Diophy bag was an authentic Louis Vuitton piece and that Louis Vuitton had sponsored and approved of the use and misrepresentation of the Diophy bag. The court found that the Artistic Relevance test had been met, as the use of the Louis Vuitton mark had some artistic relevance to the plot as a humorous device and was not explicitly misleading because viewers would not believe that Louis Vuitton produced or endorsed the film. Also in June of last year, the Eleventh Circuit in University of Ala. Bd. of Trus. v. New Life Art, Inc.9 held that an artist’s renderings of the University of Alabama’s football team’s uniforms and school colors on paintings, prints and calendars did not violate the school’s trademarks because they were protected by the First Amendment as artistic expression. The artist Daniel Moore had used the
University’s football team’s jerseys and helmet designs, as well as the crimson and white colors used in the team’s uniforms, in various famous scenes from Alabama’s football history. The court, applying the Artistic Relevance test, found that the use was non-infringing, as the University’s uniforms were relevant to the artistic expression of realistic portrayals of famous scenes from Alabama football history and there was no marketing of the items explicitly stating that they were affiliated with the University. Finally, in June of last year, the Seventh Circuit in Brownmark Films, LLC, v. Comedy Partners,10 affirmed the dismissal of a viral video owner’s copyright infringement lawsuit against the producers of South Park. South Park moved to dismiss the lawsuit on fair use grounds because the episode was meant to lampoon the plaintiff’s video, which was characteristic of society’s obsession with viral videos made famous on the Internet like Psy’s “Gangnam Style” music video. Relying only on copies of plaintiff’s video and the South Park episode, the court held that the Copyright Act’s fair use defense barred the plaintiff’s claims as the episode was a parody that provided commentary on the “ridiculousness” of plaintiff’s video and the viral nature of YouTube videos, was sufficiently transformative from the original, took no more of plaintiff’s work than was necessary to create the intended allusion, and would not have an adverse effect on the market value of plaintiff’s work. First Amendment protections can provide a potent defense for creators of expressive works against intellectual property and
right of publicity claims. Such protections have been successfully applied to protect the use of other’s copyrighted works, trademarks and individuals’ names and images in songs, movies, television shows, paintings, prints and apps. However, such a defense may not be successful if the use is misleading as to the source or origin of the defendant’s work, used to obtain a free ride on a plaintiff’s rights or is not sufficiently transformative of the original work. Marc J. Rachman, a member of NYCLA’s Entertainment, Intellectual Property & Sports Section and Young Lawyers’ Section, is a litigation partner at Davis & Gilbert LLP and co-chair of the firm’s Intellectual Property Litigation Group. Dominick R. Cromartie is a litigation associate at Davis & Gilbert LLP and part of the firm’s Intellectual Property Litigation Group. He is a member of NYCLA’s Entertainment, Intellectual Property & Sports Section, and Labor Relations & Employment Law, Law-Related Education, and Minorities & the Law Committees. References: 1 875 F.2d 994 (2d Cir. 1989) 2. 159 Misc. 2d 54 (N.Y. City Civ. Ct. 1993) 3. 25 Cal. 4th 387 (Cal. 2001) 4. 17 U.S.C. § 107 5. Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S. Ct. 769, 788 154 L. Ed. 2d 683, 711 (2003) 6. Lohan v. Perez, No. 11 CV 5413 (DRH) (ARL), 2013 U.S. Dist. LEXIS 24049, at *13-18 (E.D.N.Y. Feb. 21, 2013) 7. Case No. BC 483475, slip op. (Ca. Super. Ct. Jan. 10, 2013) 8. 868 F. Supp. 2d 172 (S.D.N.Y. 2012) 9. 683 F.3d 1266 (11th Cir. 2012) 10. 682 F.3d 687 (7th Cir. 2012)
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