Alarm bells rather than wedding bells are ringing in the insular but passionate world of romance novels as authors and publishers grapple with the question whether an author can claim exclusive rights to use “cocky” in book titles.

It started in early May, 2018. A self-published author named Faleena Hopkins obtained a registration for “cocky” as the the trademark for “a series of downloadable e-books in the field of romance.” Hopkins’s tomes include such titles as  Cocky Cowboy and Cocky Senator. Registration in hand, she sent cease-and-desist emails to other authors who had published books similarly titled.  Hopkins also reported the alleged infringements to Amazon, which removed a number of the titles from its Kindle e-book store.

Some of these authors  responded by re-titling their books. Jamila Jasper, for example, changed the title of her book from Cocky Cowboy to The Cockiest Cowboy to Have Ever Cocked. Hopkins’s campaign, not surprisingly, aroused intense emotions, and not only in the Twitterverse. Kevin Kneupper, an author and retired lawyer, filed a petition with the US Patent & Trademark Office (PTO) to cancel Hopkins’s registration. He is being supported in this by the Romance Writers of America (RWA), a nonprofit trade association. The RWA contacted Amazon to resume selling other writers’ Cocky titles, with some success.

Sniggering aside, this case actually raises a real trademark issue. Hopkins’s claim is, of course, that Cocky has been established as her brand–readers seeing Cocky in the title of a romance novel will identify it as one of her books. Her detractors claim that the word is simply descriptive of a particular subgenre of romance novels. For example, readers with a taste for historical “bodice-rippers” are guided by the cover and the title to their favored format. Likewise, lovers of medical romances will look for books with “doctor” in the title. So a reader who obtains fulfillment seeing a heroine break through the hero’s arrogant front would be aroused by a “cocky” title.

Whether a descriptive term can be protected as a trademark generally turns on the term’s “secondary meaning,” which is the extent to which an ordinary consumer would associate the term with a particular source. For example, one could argue that Star Wars is descriptive of a genre of space opera, but the term has unquestionably established secondary meaning. Secondary meaning is a factual question, usually established through consumer survey results. Hopkins’s challenge will be to establish that romance readers think of Cocky books as Hopkins books. The resolution is in the hands of the PTO.

 

 

By: Self-portrait by the depicted Macaca nigra female; rotated and cropped by David Slater. [Public domain], via Wikimedia Commons
The Ninth Circuit dropped the curtain last week on nearly three years of litigation waged by People for Ethical Treatment of Animals (PETA) against wildlife photographer David Slater in the infamous “Monkey Selfie” case by declaring that monkeys do not have standing to sue for copyright infringement.

In 2011, Slater left his camera unattended on the island of Sulawesi, Indonesia when a crested macaque named Naruto grabbed the camera and took several photographs of himself.  A few years later, Slater published the pictures online and drew the ire of PETA, which filed a complaint in 2015.  PETA alleged Slater infringed Naruto’s copyrights in the photos and claimed it could adequately defend Naruto’s rights as the macaque’s “next friend.”  The law allows “next friends” to sue on behalf of others if the individual they represent lacks capacity to prosecute his or her own case.

The district court dismissed the action on the grounds that monkeys do not have standing to sue under the Copyright Act.  PETA appealed, but after participating in oral argument, entered into a settlement agreement with Slater whereby PETA would withdraw its appeal in exchange for Slater donating a portion of the profits earned from the pictures to charities that protect crested macaques in Indonesia.  Nevertheless, Naruto was not named a party to the settlement and the Ninth Circuit did not take kindly to PETA resolving the matter without its “next friend.”

“In the wake of PETA’s proposed dismissal, Naruto is left without an advocate, his supposed ‘friend’ having abandoned Naruto’s substantive claims in what appears to be an effort to prevent the publication of a decision adverse to PETA’s institutional interests,” wrote Judge Carlos Bea who sarcastically added that Naruto should consider suing PETA for breach of fiduciary duty.  “Puzzling, while representing to the world that ‘animals are not ours to eat, wear, experiment on, use for entertainment, or abuse in any other way’ PETA seems to employ Naruto as an unwitting pawn in its ideological goals,” Bea argued.

Notwithstanding the settlement agreement, the Ninth Circuit issued an opinion.  It found Naruto, as the alleged owner of the photographs, technically had Article III standing since he suffered a concrete and particularized economic harm that could be redressed by the court.  However, the Ninth Circuit found the Copyright Act only authorizes humans and legal entities to sue for infringement since it does not expressly permit otherwise.  The court also reasoned the Act’s language referencing an author’s “children,” “grandchildren,” and “widow/widower” implies humanity as animals cannot marry or produce heirs entitled to property by law.

Jeff Kerr, general counsel for PETA, disagrees.  “Naruto should be considered the author and copyright owner, and he shouldn’t be treated differently from any other creator simply because he happens to not be human,” Kerr said in an interview with Time.

PETA has not yet decided whether it will appeal the ruling to the United States Supreme Court.  As for Naruto, he could not be reached for comment.

After Netflix negotiated mega raises for the main actors of its hit program “Stranger Things” in March of this year, short-film producer Charlie Kessler wants a piece of the pie.  Kessler filed an action in Los Angeles County Superior Court last week for breach of an implied contract against “Stranger Things” creators Matt and Ross Duffer who he claims heard his pitch for a science fiction show at a film festival in 2014 and ran with it without his consent and without providing him just compensation.

Watching streaming television with a cup of tea with inscription "Just One More Episode"“Stranger Things” debuted in July of 2016 and received eighteen Emmy nominations last year.  According to The Hollywood Reporter, Netflix is now paying lead actors Winona Ryder (Joyce Byers) and David Harbour (Jim Hopper) a whopping $350,000 per episode, and up to $250,000 an episode for its young adult stars.

Kessler alleges he discussed the short film he created entitled “Montauk” with the Duffer brothers at the Tribeca Films Festival in 2014, which is a science fiction work set in Montauk, New York.  Montauk is home to an abandoned military base that is rumored to be haunted.  Kessler contends the Duffer brothers misappropriated the concept of “Montauk” to produce “Stranger Things” without Kessler’s permission. Kessler also alleges “Stranger Things” was originally titled “The Montauk Project” and took place in New York, but was later renamed and set in the fictional town of Hawkins, Indiana. The Duffers’ attorney Alex Kohner issued a statement that the Duffers never saw “Montauk” and never discussed a project with Kessler. Kohner called Kessler’s complaint “completely meritless” and “an attempt to profit from other people’s creative and hard work.”

Although purely abstract ideas cannot be copyrighted, California does afford some protection to show pitches through contract law. To prevail, a plaintiff must establish that he or she prepared the work being pitched, disclosed it to the defendant, and had a reasonable expectation of payment in exchange for pitching the work which can be implied from the circumstances.

Whether Kessler will be able to demonstrate these elements remains to be seen. The Duffers’ response to the complaint will be due in early May. Kessler seeks monetary damages, injunctive relief, and punitive sanctions.

California’s Actor-Age Censorship Law (AB 1687), which would have required IMDb.com to remove age-related information from its web pages, was declared unconstitutional by a district court last month on free speech grounds.

75365726 – IMDb biography profile of actress Meryl Streep.

SAG-AFTRA vigorously campaigned for the law, which it claimed would mitigate age discrimination in Hollywood.  Within two months of the law taking effect in 2017, IMDb obtained a preliminary injunction and later filed for summary judgment claiming the legislation impermissibly restricted its First Amendment rights.  Judge Vince Chhabria of the Northern District of California agreed.

Although Chhabria acknowledged the law may be well-intentioned, he applied strict scrutiny and found the law is not narrowly tailored to eliminate age discrimination in the industry.

The law is under-inclusive, Chhabria determined, because it targets solely IMDb rather than other online sources which would remain free to broadcast an actor’s age.  The law also required IMDb to remove age-related information of an actor only if he or she requests the information be removed, yet the site would remain free to publish the birthdates of non-subscribers and, in theory, leave those individuals vulnerable to potential discrimination.

Chhabria found the law to be over-inclusive because it requires IMDb to remove ages of all requesting subscribers, including those under 40 who are not protected by the state’s anti-discrimination laws.

Further, Chhabria viewed the law as a direct restriction on speech prohibiting IMDb from publishing truthful information that is often supplied by the public because of speculation that a third party might use the information for unlawful purposes.  “There is no support in controlling case law for the proposition that a state may ban publication of facts to impede a third party’s possible reliance on those facts to engage in discrimination,” Chhabria found.

Supporters of the law argued it regulates commercial speech and honors the contract between subscribers and IMDb who, by subscribing to the database, can select what information about them is displayed to the public.  Chhabria was not persuaded.  “The speech at issue is factual information about entertainment professionals, conveyed… in a manner unconnected to any commercial transaction,” he wrote.  Further, the law requires IMDb to remove age-related information from its website regardless of the source of the information and, accordingly, “expressly contemplates that it will impact not just information obtained pursuant to a contractual relationship, but also information provided by members of the public,” Chhabria wrote.

In dicta, Chhabria observed the law’s legislative materials repeatedly cite an article discussing sex discrimination in the entertainment industry and opined that, although the law facially targets age discrimination in Hollywood, the actual purpose of the law is to combat sexism.  “The defendants barely acknowledge this,” Chhabria noted, “much less explain how a law preventing one company from posting age-related information on one website could discourage the entertainment industry from continuing to objectify and devalue women.”

SAG-AFTRA’s general counsel Duncan Crabtree-Ireland stated the union is “extremely disappointed with [the] ruling.”  He added, “the Court unfortunately fails to understand or recognize the massive impact gender and age discrimination has on all working performers.  That discrimination is facilitated by IMDb’s insistence on publishing performers’ age information without their consent…”.

SAG-AFTRA and the State of California are expected to appeal this decision to the Ninth Circuit.

21575590 – dolphins at sea

The Ninth Circuit issued an opinion last Friday that seems second nature. The court affirmed summary judgment for Wyland Galleries against marine wildlife artist Pieter A. Folkens, who claimed Wyland copied Folkens’s drawing of crossing dolphins in Wyland’s giclée titled “Life in the Living Sea.”  Folkens asserted Wyland created enough of the allegedly infringing prints to net over $4 million in sales.

Folkens published his black and white drawing in 1979, which depicts one dolphin swimming vertically and the other swimming horizontally.  Wyland, best known for its “whaling wall” murals displayed worldwide, created a color print in 2011 depicting three dolphins, aquatic plants, and other wildlife.  Two of the dolphins in Wyland’s work are crossing, but do so at different angles than those in Folkens’s drawing.  Folkens acknowledged the concept of crossing dolphins occurs in nature and cannot qualify for copyright protection.  Dolphin crossing is typical behavior since dolphins are social animals and often travel in groups.  However, Folkens argued his particular expression of the dolphins warranted protection and Wyland’s work was substantially similar to his depiction.

The Eastern District of California had awarded summary judgment for Wyland in 2016, holding natural positioning and physiology of animals are not protectable.  The Ninth Circuit affirmed this decision citing the principles set forth in Satava v. Lowry, which considered whether a life-like jellyfish sculpture in clear glass could be protected.  In that case, the court recognized ideas, “first expressed in nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them.”  If this were not the case, the Court noted an artist could monopolize images of geese flying in a “V” as they migrate, a mother duck leading ducklings out of a pond, a hummingbird hovering over a flower as it sucks its nectar, bats hanging upside down in cave, and countless other scenes commonly found in nature.

The Court in the instant case acknowledged an artist may receive protection for how a wildlife scene is expressed, such as pose, attitude, gesture, muscle structure, facial expression, coat and texture.  However, any such protection is “thin,” which means the defendant’s work must be virtually identical to be held infringing.  The Court found this not to be the case here where Folkens’s work is a relatively basic drawing in black and white.  Conversely, Wyland’s print is in color and features numerous additional elements.  Wyland’s dolphins also do not have the same texture and skin tone as Folkens’s, which possess distinctive ripples.  That Folkens enlisted animal trainers to create the scene he captured is irrelevant, said the Court, because the scene is merely a recreation of what commonly occurs in nature.

Barring an appeal to the California Supreme Court, the Ninth Circuit’s decision brings this dolphin tale to a close.

37541052 – belchonock

It is not often that a court of law can issue a landmark opinion laden with profanity and sexual innuendos.  But last Friday, the United States Court of Appeals for the Federal Circuit seized the opportunity in a colorful decision holding the refusal of the United States Patent and Trademark Office (USPTO) to register street artist Erik Brunetti’s mark “FUCT” is an unconstitutional restriction of Brunetti’s right to free speech.

Brunetti and professional skateboarder Natas Kaupas created the “Fuct” clothing brand in 1990 and sought to register “FUCT” as a federal trademark in 2011.  In its refusal, the USPTO cited Section 2(a) of the Lanham Act which case law has interpreted to bar registration of a mark if a “substantial composite of the general public” would find it “immoral” or “scandalous.”  Brunetti then turned to the Trademark Trial and Appeal Board (TTAB) to no avail.

Since the enactment of the 1905 Trademark Act, the USPTO has had the power to refuse registration to marks deemed immoral, scandalous, deceptive, or disparaging.  This restriction was imported into the Lanham Act in 1946 and withstood a constitutional challenge in the 1981 case In re McGinley where the government successfully argued a refusal to register a mark does not implicate an applicant’s First Amendment rights because the applicant can still use the mark as he or she pleases, just without federal trademark protection.

Then came a game-changer when the U.S. Supreme Court decided the pivotal case In re Tam this June involving an Asian rock group who sought trademark registration of the racial slur “THE SLANTS” but was denied under the disparagement provision of Section 2(a).  In Tam, the Court found refusing to register “THE SLANTS” constituted an impermissible viewpoint-based restriction on speech and struck down the disparagement element of 2(a) as unconstitutional.

Judge Kimberly A. Moore of the Federal Circuit wasted little time affirming the TTAB’s finding that “FUCT” was an immoral and scandalous mark rooted in an “unmistakable aura of negative sexual connotations.”  However, Moore acknowledged that, although offensive and uncouth, an immoral and scandalous mark still conveys expression protected by the First Amendment and restricting registration on these grounds constitutes content-based discrimination.

The government conceded this but argued a form of intermediate scrutiny as set forth in the seminal Supreme Court case Central Hudson should apply because trademarks derive from a federal subsidy, involve a limited forum, and constitute commercial speech – arguments largely rejected in Tam.

Judge Moore was not persuaded and found the restriction fails even under intermediate scrutiny.  “In this electronic/Internet age, to the extent that the government seeks to protect the general population from scandalous materials, with all due respect, it has completely failed,” wrote Moore.  The Federal Circuit also found Section 2(a) was not sufficiently tailored enough to exclude, for example, only sexually explicit or obscene material, since “immoral” and “scandalous” are fatally ambiguous.  Moore noted how the subjective nature of Section 2(a) has caused a myriad of inconsistent registrations such as “BACKROOM MILF,” “MUTHA EFFIN BINGO”, and “FCUK” vs. the rejected marks “GOT MILF”, “F**K PROJECT” and Brunetti’s “FUCT.”

In the wake of Tam and Brunetti, critics are concerned that stripping the government’s ability to refuse registration to immoral and scandalous marks will poison the marketplace.  But Lincoln D. Bandlow, a partner in the Fox Rothschild LLP Los Angeles office who specializes in First Amendment and intellectual property matters, told the Los Angeles Daily Journal the market will keep scandalous marks in check.  “Market forces will tamp it down,” he said.  “There’s a lot of things people don’t say on television – not because people don’t want to hear it, but because sponsors don’t want to hear it.”  As for a truly obscene mark depicting sexual conduct, Bandlow added “then you’d have a scenario where you’d have material that’s not protected under the Miller test.”  Miller was the seminal 1973 case in which the Supreme Court held obscene materials do not enjoy First Amendment protection.

The government has ninety days from the entry of judgment to ask the Supreme Court for a writ of certiorari.  As of now, it appears the opinion is here to stay.

A federal court on Monday held California’s State Insurance Compensation Fund has no obligation to cover a series of claims from three porn actors against Cybernet for allegedly causing them to contract human immunodeficiency virus (HIV) during film shoots in 2013.

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Cybernet, a San Francisco-based porn studio, was founded in 1998 and currently operates a series of adult-websites including Kink.com which primarily features content involving bondage, domination, sadism, and masochism (BDSM).  Actors John Doe, Cameron Adams and Joshua Rogers sued the company in 2015 for creating a dangerous and unsanitary work environment by failing to test performers for sexually transmitted diseases before each shoot, discouraging the use of condoms, and inviting random members of the public to participate in intimate group activities.  The actors further allege Cybernet intentionally misrepresented the shoots were safe by “requiring” the use of protection, subjected actors to physical assault without consent, and intentionally inflicted emotional distress by creating a situation where the spread of sexually transmitted diseases was virtually certain to occur.

After Cybernet demanded that its insurer, the State Fund, cover the actors’ tort claims, the State Fund fired back, arguing it already paid the actors medical expenses under California’s workers’ compensation system and owed no further duty.  U.S. District Court Judge for the Northern District of California Yvonne Gonzalez Rogers agreed and found the actors’ exclusive remedy for their negligence-based causes of action came within the workers’ compensation system.

Further, while the actors’ allegations of intentional misconduct were not necessarily relegated to workers’ compensation, Rogers found the insurance policy’s exclusion for “damages or bodily injury intentionally caused or aggravated by [Cybernet]” exempted claims of intentional torts.  Cybernet argued case law requires insurers to provide conclusive evidence demonstrating an exclusion of coverage applies and such evidence did not exist for a myriad of reasons, including the language of the policy itself which expressly covered “bodily injury by disease of an employee.”  Rogers was not convinced and cited precedent which indicated that even though an insurance policy can expressly cover a disease contracted on the job, claims that the employer intentionally caused or aggravated the disease are a different story.           

Cybernet has requested leave to file a motion for reconsideration.

My partner Nancy Yaffe has just posted a blog with disturbing implications for California entertainment lawyers. As young practitioners we  all were taught that every agreement with a person providing services on a film or TV show must include a provision that the results and proceeds of the person’s services are a “work made for hire” under copyright law.  This language is as important for entertainment lawyers as the Prime Directive is for Capt. Kirk on Star Trek. It now appears that the California EDD takes the position that the presence of those four words in a contract creates a presumption that the service provider is an employee, not a contractor. The Department will take this position even if none of the other indicia of employment are present, and regardless of the plain intent and structure of the Copyright Act.

Law concept: circuit board with  copyright icon, 3d render

Producers can still obtain copyright ownership using assignment language, but this has drawbacks, including that the assignor can terminate the assignment after 35 years. This presents producers with a difficult choice. Proceed as usual and run the risk of being assessed for back taxes and penalties, or engage all cast and crew as employees, with the inconvenience and cost that can entail.

Read Nancy’s enlightening blog here.

We blogged recently about criminal proceedings brought by the LA City Attorney against numerous defendants accused of operating pay-for-play casting workshops in which actors allegedly paid for the opportunity to audition in front of casting directors. These cases are working thei

Man in handcuffs covering face
Copyright: ratru / 123RF Stock Photo

r way through the justice system, as some defendants pled guilty. Two more casting directors have taken guilty pleas, while some twenty-five are still awaiting trial.

Read more about it in the Deadline Hollywood story here.

The stakes just raised in an imminent trial over the validity of the San Diego Comic-Con trademark. What started out as a straightforward trademark dispute has now implicated First Amendment free speech issues.

10066940 – super hero and a ninja doing battle.

The underlying case involves an action by SDCC, which owns a trademark registration for San Diego Comic-Con, against Dan Farr and Bryan Brandenburg, organizers of a Utah convention named Salt Lake Comic Con. Among Farr’s and Brandenburg’s defenses is that “Comic Con” has become a generic description of fan conventions of that type. I recently blogged about this here.

Springing into action outside the courtroom as well as in, Farr and Brandenburg made numerous posts on their website and social media accounts, including by posting court documents, painting themselves as plucky Davids against the mighty San Diego Goliath. In addition to the trademark arguments, their posts also included accusations of fraud against SDCC, but these claims were dismissed last month on summary judgement. Ultimately, over 200,000 media articles were written on the case.

Anthony Battaglia, the US District Judge in San Diego, became concerned that the extensive coverage would taint the local jury pool. He issued a series of gag orders requiring both sides to refrain from discussing the issues publicly or from posting court documents. He also ordered Farr and Brandenburg to post a disclaimer on the Salt Lake Comic Con website specifically stating that they were under court order to make no comments on the case.

Farr and Brandenburg petitioned the Ninth Circuit Court of Appeals for a writ of mandamus overturning the District Court order on First Amendment grounds. They assert that they order constitutes a prior restraint on free speech, which is highly disfavored under First Amendment jurisprudence. They claim that, contrary to Judge Battaglia’s point that the imminence of trial justified his order, “the nearness of trial weighs at least as heavily against prior restraints … because that is the ‘precise time when public interest in the matters discussed would naturally be at its height.'”

They argue further that the gag order is overbroad. The judge could, for example, have prohibited comment only on the fraud claims that had already been dismissed without also barring comment on the genericness of SDCC’s trademark, which is the critical issue in the case. The ban on posting court documents also aroused Farr’s and Brandenburg’s ire. They claim that a prior restraint on truthful publication of official court records is “unprecedented.”

They had this to say in opposition to the mandated disclaimer:  “[T]he petitioners should not be forced to make the Hobson’s choice between (1) acquiescing in the continued infringement of their right to remain silent, by retaining the unduly intrusive disclaimer mandate, or (2) saying nothing, not even that they have been suppressed, when they want to explain their silence.”

The Ninth Circuit agreed on October 3 to hear the petition and gave SDCC until October 6 to file its answering brief. In a rare move, the appeals court also invited Judge Battaglia to respond to Farr’s and Brandenburg’s petition.