William Shakespeare’s character Juliet famously asked Romeo “What’s in a name?” The question still rings true today, and the answer may be, well, a lot.

The Power of a Name

The value in Grammy-award winning singer Rihanna’s name, her surname specifically, is at the center of a legal dispute between her and her father.

Robyn Rihanna Fenty, known worldwide as Rihanna, sued her father, Ronald Fenty (“Mr. Fenty”) alleging he used their surname, Fenty, to mislead consumers into thinking she was associated with his business, Fenty Entertainment LLC. Rihanna filed suit in the U.S. District Court for the Central District of California against Mr. Fenty and his business partner, Moses Joktan Perkins, claiming a violation her right of publicity, false designation of origin, and false light, among other claims. She is seeking damages, an injunction to stop her father from using her “FENTY” trademark to sell or promote any goods or services, and a declaratory judgment.

Known worldwide as a pop music star and beauty icon, Rihanna is also a prosperous businesswoman.  According to the complaint, she has been using her surname professionally and in connection with her brand and business ventures since at least August 2012. Through her company, Roraj Trade, LLC, she owns U.S. trademark registrations for a series of marks containing her surname, including “FENTY BEAUTY”, “FENTY BEAUTY BY RIHANNA”, and “FENTY GLOW”. She also owns trademark registrations in multiple foreign jurisdictions for the marks: “FENTY BEAUTY”, “FENTY BY RIHANNA”, FENTY”, and “FENTY FRAGRANCE”. Rihanna’s trademarks cover a number of products, including makeup, fragrances, and sneakers. “FENTY BEAUTY” has become one of Rihanna’s most popular brands, standing out at the forefront of popular cosmetics retailer Sephora, and being named one of Time Magazine’s 2017 “Inventions of the Year.

In 2017, Mr. Fenty opened Fenty Entertainment LLC, described on its website as an entertainment company “cultivating new talent and developing TV and media platforms.” His company is registered as an LLC in California and is also described as a production company developing “motion pictures, live concerts, and record producing.” In sum, Mr. Fenty’s business brands itself as offering services in the entertainment industry – the same industry in which his daughter has become of the biggest stars. With Rihanna’s visible brand campaigns, such as “Fenty Beauty”, “Fenty x Savage”, “Fenty x Puma” – and now her father’s Fenty Entertainment LLC…use of the Fenty name seems to leave room for confusion.

Supporters of Mr. Fenty’s business might respond: “Well, it’s his last name, too.” But what rights does a party have to their own last name?

Can A Surname Be Trademarked?

It depends. U.S. federal trademark law doesn’t allow an applicant to register a surname that is “primarily merely a surname” on the Principal Register.  15 U.S.C. §1052(e)(4).  This means there is no protection on the Principal Register for a surname that generally has no meaning outside of being someone’s last name.

On the other hand, if a surname has secondary meaning, also known as “acquired distinctiveness,” it’s eligible for protection under federal trademark law. A trademark registration applicant must prove that consumers associate the surname with a brand rather than simply thinking of it as someone’s last name.  A quick example is fast-food chain McDonald’s. While “McDonald” is a surname, McDonald’s Corporation owns the registered mark “McDONALD’s” in connection with restaurant services because the word “McDonald’s” has acquired a secondary meaning as a fast food restaurant with the golden arches.

Similarly, in Rihanna’s complaint, she argues that the “FENTY” mark, is “inextricably intertwined” with her professional persona, reputation, and businesses.  She argued that her “FENTY” mark has secondary meaning because relevant consumers understand the association with Rihanna when they see the mark “FENTY”.

It’s important to note that Rihanna owns the “FENTY” trademark in connection with beauty, makeup, and fashion products.  However, her complaint does not raise a trademark infringement claim, perhaps because Mr. Fenty filed a trademark application to register “FENTY” in connection with resort hotel services, not beauty products. His trademark application is still under review by the U.S. Patent and Trademark Office, which issued an initial refusal to register “FENTY”, alleging that it is primarily merely a surname when viewed in connection with hotel resort services (and citing 677 public records of individuals with the surname Fenty on the LEXISNEXIS® surname database).

Rihanna’s complaint brought claims of false designation of origin, suing her father for allegedly using their last name (her trademark) in his business to mislead consumers to think she is associated with his company.  Rihanna argues that the strong recognition of her “FENTY” trademark combined with her father’s choice to name his business Fenty Entertainment, and Rihanna’s overall influence in the entertainment industry confuses consumers into thinking Fenty Entertainment is associated with Rihanna, Roraj, and her Fenty Beauty product line.

Agency Law

The complaint also raises principles of agency law – it alleges that Mr. Fenty misrepresented the company as having authority to submit offers and enter into contracts on behalf of Rihanna. One notable allegation is that Fenty Entertainment engaged in conduct to book Rihanna for a series of Latin American concerts.

The complaint further alleges that until just about four months ago – October 2018, a press release on Fenty Entertainment’s website read “Ronald Fenty, father of superstar recording artist Rihanna, today announced the launch of Fenty Entertainment with his daughter Robyn ‘Rihanna’ Fenty”, implying an allegedly false affiliation with Rihanna.  According to the complaint, Fenty’s social media accounts stated that the company was affiliated with Rihanna until as recently as November 2018.

The complaint claims that while Mr. Fenty is Rihanna’s father, “he does not, and has never had, authority to act on Rihanna’s behalf.”

Even though Rihanna is a superstar entertainer, her “FENTY” trademarks largely protect her services in beauty, fashion, and fragrances. What does this mean for her father’s business as it relates to the entertainment industry?

The U.S. District Court for the Central District of California will decide.

Image from 123RF Limited

The drama is building in the comic clash between TBS late-night talk show host Conan O’Brien and comedy writer Alex Kaseberg over jokes Kaseberg claims O’Brien and his writing team stole from him.  As previously reported, O’Brien was able to knock out two of the five jokes in question on summary judgment on the grounds that they were independently created and/or too different for a reasonable juror to conclude they were copied, but three of Kaseberg’s jokes remain standing.  A jury trial is scheduled to begin this May.

In the trial brief O’Brien filed last month, O’Brien raises a funny bone of contention: are Kaseberg’s jokes even original enough to warrant copyright protection at all?  The brief asserts that “Kaseberg’s jokes are negligible and trivial variations on unprotectable ideas, preexisting works, or public domain works, such that they do not contain the requisite amount of creative input to qualify for copyright protection.”

Kaseberg’s jokes, like many jokes, pertain to news stories and current events.  The three jokes in question consist of a gag about New England Patriots’ quarterback Tom Brady giving Seattle Seahawks coach Pete Carroll the new truck Brady promised to award the MVP of Super Bowl XLIX, a jeer about a hypothetical street named after Bruce Jenner (i.e., “cul-de-sacless”), and a discovery that the Washington Monument is ten inches shorter than previously thought because of “shrinkage” resulting from cold weather.  Only the expressions of these humorous ideas, not the ideas themselves, are copyrightable.  And, as O’Brien’s brief notes, expressions that are “standard, stock, or common to a particular subject matter are not protectable under copyright law.”  However, Kaseberg’s brief stresses the low standard of originality the Copyright Act requires and contends all that is needed is “some creative spark, no matter how crude, humble or otherwise.”

In the event the jury finds Kaseberg’s jokes “original” enough to be copyrightable, Kaseberg will still have to demonstrate O’Brien’s jokes were “virtually identical” to Kaseberg’s – a much higher standard than the typical “substantial similarity” test.  Since Kaseberg’s jokes contain inherent newsworthiness, the Court found they could only receive thin copyright protection which requires the copying to be nearly verbatim to be actionable.

O’Brien argues Kaseberg falls well short of this standard, claiming the jokes are “worded differently, convey different actions, contain different levels of information, and involve different perspectives.”  O’Brien also claims differences in structure and delivery (O’Brien entertaining a live audience and Kaseberg writing his jokes in print) defeat Kaseberg’s claim.

Specifically, the differences in the Superbowl joke O’Brien identifies include the fact that O’Brien’s punchline (“So, Brady is giving his truck to Seahawks coach Pete Carroll”) was delivered in a neutral and sarcastic tone whereas Kaseberg’s punchline (“So enjoy that truck, Pete Carroll”) was more caustic and directed to Carroll.

With respect to the Washington Monument joke, O’Brien cites the fact that Jimmy Fallon tweeted the joke the day before Kaseberg published it, suggesting the joke is not original to Kaseberg.  O’Brien also pointed out that his punchline stating the monument, itself, was blaming the “shrinkage” on cold weather vs. Kaseberg’s jest “You know the winter has been cold when a monument suffers from shrinkage” distinguishes the jokes in that O’Brien sarcastically implies other factors shrunk the monument while Kaseberg solely attributes the weather to the shrinkage.  Finally, with respect to the Jenner joke, O’Brien claims the difference in punchlines “Cul-de-Sackless” vs. “Cul-De-No-Sac” is significant, as well as the fact that O’Brien’s joke was directed to the residents of the street whereas Kaseberg’s jeer was not.

Kaseberg’s brief acknowledges the Court’s finding that the jokes must be “virtually identical” to be actionable, but claims that this standard is met – especially in light of Kaseberg’s allegations that O’Brien told these jokes on his show the same night after Kaseberg posted them.  A funny coincidence?  Kaseberg thinks not.

It remains to be seen who will have the last laugh in this dispute, but with trial briefs submitted and less than four months before showtime, it appears this case will reach a grand finale.

Readers over 40 will remember the TV series MacGyver, which ran on ABC from 1985 through 1992. The show starred Richard Dean Anderson as a mild-mannered secret agent with an uncanny ability to escape the gravest perils by repurposing ordinary objects around him.  The show was such a hit that “macgyver” entered the lexicon to refer to an ingenious solution to a problem.

The original series was packaged by Major Talent Agency (“MTA”), which represented Henry Winkler and John Rich. Winkler and Rich, through their loanout companies, sold the show to Paramount under a 1984 agreement (“1984 Agreement”), which contained a specific provision according MTA a package commission on any series produced under the agreement and on “any spin-off series therefrom.” Paramount TV was acquired by Viacom in 1994, and when Viacom spun off CBS in 2006, the rights to MacGyver went with it.  In this franchise-crazed era, a revival of the program was inevitable; the new MacGyver premiered on CBS in the fall of 2016 and is now in its third season.  Citing the 1984 Agreement, MTA’s successors demanded their package commission from CBS, claiming that the new MacGyver constitutes a “spin-off series.” When CBS declined to pay, litigation ensued.

The case is deceptively simple. It turns on the meaning of the word “spin-off” as used in the 1984 Agreement. CBS’ publicity for the current series refers to it as a “reboot” or “remake.” Although neither of these terms appears in the 1984 Agreement, MTA’s successors assert that “[a]t the time of the 1984 Agreement, the term ‘spinoff,’ unless further defined, was broadly understood in the industry to mean a television series that is based on, comes out of or otherwise derives from an earlier television series, including what are referred to today as, among other things, ‘reboots,’ ‘revivals,’ ‘remakes,’ ‘sequels,’ and ‘spin-offs.'”

Conversely, CBS will argue that “remake” and “spinoff” refer to different things. A spinoff takes characters or settings from one work as the starting point for a different work. In contrast, a remake uses principal characters from the original work to animate a work similar to the original. These distinctions were well-known in 1984. At that time, A Star Is Born had already been remade twice. As for spinoffs, look no further than Happy Days, the show that made Henry Winkler’s career.  That series was itself a spinoff from a segment of Love, American Style and in turn was spun off to Laverne & Shirley and Mork & Mindy. By these definitions, the new MacGyver show is more fairly characterized as a remake than as a spinoff.  Of course, if the parties to the 1984 Agreement had intended to pay commissions to MTA for remakes as well as spinoffs, they could have said so.

There are, however, plausible theories that MTA’s successors could use to explain this omission. In 1984, remakes may not have been novel but were largely confined to theatrical motion pictures. The craze to recycle old TV series is a much more recent phenomenon. Further, the distinguishing characteristic of a remake is inherently fuzzy when applied to TV. A remake, by definition, substantially replicates the plot of its original, but every episode of a TV series is a new story, which begs the question of what exactly it is that is being remade. Under this logic, any reversioning of a series can be theoretically characterized as a spinoff, even one that involves substantially the same characters and setting. Viewed in this light, it is understandable why the parties to the 1984 Agreement might have used “spinoff” to refer to any new version of a series.

Sometimes, seemingly simple questions of contract interpretation can illuminate transformations in the entertainment industry over time. Similar conflicts arose over whether streaming revenues should be deemed “home video” receipts for purposes of calculating backend participations. Unlike those cases, the MacGyver case does not implicate deep technological changes, but it does reflect a programming trend that was perhaps not foreseen in 1984.

 

It’ll be hard to dance out of this one.

An actor, an influencer, and a rapper have filed lawsuits against Epic Games Inc., the creator and publisher of “Fortnite”, over the use of certain dances in the game, alleging copyright infringement.  Fortnite is a survival shooter, battle royale, “king of the hill”, or, last person standing video game.  The game has become extremely popular, with Epic reporting to media outlets that it now has up to 200 million players.  Players can create their own worlds and battle arenas — and at the center of controversy, players can choose what dance their characters perform when they win.

Alfonso Ribeiro, best known for his role as the beloved character of Carlton on the 1990s hit television show “The Fresh Prince of Bel Air”, is suing Epic over the use of a dance he made popular on the show. The dance, usually referred to as “The Carlton Dance”, can be seen in the game as a function when a player wins. Fortnite calls the dance “Fresh” and game players can purchase various dances known as “emotes” for their characters, including another called “Rambunctious” which mirrors a dance performed by Will Smith’s character on “The Fresh Prince of Bel Air”. These are just a few examples of multiple in-game purchases and downloadable content (DLC) that have generated wild amounts of money in revenue for Epic — despite the fact that the game itself is free to download and play.  According to Variety, analysts estimate Fortnite is generating $100 million per month.

In Ribeiro’s lawsuit, he asked the U.S. District Court for the Central District of California to stop Epic from using, showing, or selling the Carlton dance. Ribeiro is in the process of registering the dance under federal copyright law, a requirement to bring a copyright infringement claim.  Ribeiro argues he created the dance and made it famous over the years during appearances, including most recently during his participation on ABC’s “Dancing With The Stars” TV show. Ribeiro further claims the dance is “inextricably linked” to his identity, celebrity, and likeness.  On the other hand, the creators of The Fresh Prince of Bel Air might argue that they maintain ownership of rights to the dance, as many talent agreements contain results and proceeds provisions that give all rights in content produced on a show to the producers, not the talent.  Thus, the battle ensues over when exactly the dance was created and by whom.

But can a dance be protected by copyright?  The U.S. Copyright Act protects “original works of authorship fixed in any tangible medium of expression”.  17 U.S.C. § 102.  Visual works under the umbrella of protection include choreographic works and choreographed stage performances.  Ribeiro argues his dance constitutes a choreographed work subject to copyright protection.  And he isn’t the only celebrity to file suit against Epic.

Influencer Russell Horning, known among millennials as “Backpack Kid”, also filed suit against Epic seeking to stop the use of his popular dance, “The Floss”, in Fortnite.  Horning is also suing Take-Two Interactive, the maker of the popular video game franchise “NBA 2K” for the use of the dance without his permission. Horning quickly became a social media influencer after his performance with Katy Perry on “Saturday Night Live” in 2017.  He boasts 2.3 million Instagram followers and often posts comical videos of himself dancing.  He also recently released an EP, making “The Floss” an even more important asset of his entertainment career.

Similarly, rapper 2 Milly filed a copyright infringement lawsuit over the use of his dance, the “Milly Rock”, in Fortnite.  Fortnite presents the dance for purchase as the “Swipe It” emote.  The Milly Rock dance gained popularity due to 2 Milly’s 2015 song of the same name.  His argument parallels those of Ribeiro and Horning, claiming ownership and authorship of the dance, seeking damages for its use without permissions.  2 Milly is seeking punitive and exemplary damages.

All three lawsuits were filed in the U.S. District Court for the Central District of California.  Along with copyright claims, the lawsuits include claims for violation of the right of publicity and unfair competition.  Horning also brought claims of trademark infringement and false designation of origin.  It seems like the combination of these claims could create a Fort-nightmare for Epic Games.

These lawsuits come during a rise of celebrity disputes with video game content creators for the use of their name and likeness without their permission.  We’ve covered similar topics here.

Camille Pissarro’s Rue Saint-Honoré, dans l’après-midi. Effet de pluie {Public Domain pre-1923}

The oil painting by renowned impressionist Camille Pissarro titled “Rue Saint-Honoré in the Afternoon, Effect of Rain” appears innocent enough.  The work depicts a boulevard in Paris during a dreamy drizzly afternoon in 1897.  But it is what appears behind the canvas that portrays a far darker portrait of human suffering and has set the stage for a titanic legal fight between the Jewish family that originally owned the painting and Spain’s Thyssen-Bornemisza Collection Foundation which acquired the painting decades after it was stolen.

The dispute stems from the descendants of Lilly Cassirer-Neubauer, who was forced to surrender the painting to German officers in 1939 to obtain a visa to flee the country and avoid being sent to an extermination camp.  The Cassirer family acquired the original painting in 1898.  Several decades after World War II, in 1976, the Baron Hans Heinrich Thyssen-Bornemisza of Switzerland purchased the work in New York from an American art collector.  In 1998, the Baron left his entire collection of art to Spain which created the Thyssen-Bornemisza Collection Foundation and built the Museo Nacional Thyssen-Bornemisza in Madrid to display it.

It was not until 1999 that Lilly’s grandson Claude Cassirer received a call from an acquaintance that the painting was on display at the museum.  After the Spanish government refused to return the work, the Cassirer family filed suit in the United States District Court for the Central District of California in 2005 and ultimately withstood Spain’s defenses of sovereign immunity and the statute of limitations.

Last week, after approximately 13 years of litigation, federal judge John F. Walter in downtown Los Angeles presided over a bench trial in which the parties argued whether the Baron and/or Foundation knew, or was willfully blind to the fact that, the painting was stolen.

According to the Cassirers, on the back of the work, a partial sticker from the Cassirer family art gallery is still visible and indicated that the painting had been in Berlin.  The family also claims there is evidence that other labels on the back of the painting that the Nazis may have attached had been torn off, and that records from the Baron’s archives indicate he falsified where he purchased the painting.

Conversely, the Foundation contends that, while in hindsight the labels could raise a red flag, the Foundation’s experts conclude there would have been no reason for the Baron or museum officials to be wary of the painting’s past or link it to the Cassirer family.  The Foundation also points to the fact that the painting has been on full display at the museum indicating the Foundation believed it had nothing to hide, and that Lilly’s acceptance of a $13,000 restitution award from the German government after the war extinguished any claim she or her heirs may have to the painting.

Though trial has concluded, Walter’s decision is not anticipated until next spring and will likely be appealed regardless of the outcome.

Normally, efforts to halt arbitrations are dead on arrival if an arbitration agreement exists between the parties.  This is especially so when there is no dispute over the scope of the arbitration provision or the claims that are subject to arbitration.

restraining orderIn Shawn C. Carter p/k/a Jay-Z, et al. v. Ionix Brand Group, Inc., et al., (N.Y. Sup. Ct., New York County, Petition filed Nov. 18, 2018), Jay-Z accomplished the extraordinary, at least temporarily.  He convinced the Court to enter a temporary restraining order (“TRO”) halting arbitration before the American Arbitration Association (“AAA”) of contract claims asserted against him despite his not disputing that the claims were covered by an arbitration provision requiring AAA arbitration.  Jay-Z’s challenge to the arbitration is highly unusual.  He contends that the AAA’s procedures violate New York’s public policy against racial discrimination because the AAA did not – and could not – make available for possible selection even a single African-American arbitrator with the background and experience needed to preside over the arbitration.

Under the applicable AAA procedures, Jay-Z, Iconix and the AAA were each to submit four names from the AAA’s Large and Complex Cases roster of arbitrators for possible selection as the arbitrator of the dispute.  Thereafter, each of Jay-Z and Iconix were to strike four of the twelve selected names.  The single arbitrator for the dispute would then be selected from the remaining candidates.  Jay-Z complained that based upon his review of the more than 200 potential arbitrators in the New York area on the Large and Complex Cases roster, not one African-American arbitrator had the necessary qualifications to oversee the arbitration. As a result, Jay-Z refused to engage in the selection process until his concerns were addressed.  In response, the AAA stated that it would select his four arbitrators in order to form a list of 12 potential arbitrators who would then be subject to the strike-out procedure.   Thereafter, the AAA sent Jay-Z and Iconix a list of 12 potential arbitrators and set a deadline of November 30 for the parties to submit the names of the four they chose to strike.

Rather than engage in this process, Jay-Z went to court and sought to enjoin the process based on the lack of diversity in the “Large and Complex Cases” arbitrator roster.  In addition to his contention that no qualified African-American arbitrator was included in the roster, his application also relied on statements on the AAA’s website regarding diversity, including that the AAA roster of arbitrators “is composed of 24% women and minorities, and this figure is increasing.”  According to Jay-Z, the actual numbers are lower in commercial cases and the percentage of “minority” arbitrators is never broken out from the percentage of women and minority arbitrators.

In his Petition, Jay-Z contends that the AAA’s procedures and lack of qualified African-American arbitrators renders the agreement to arbitrate before the AAA void because it is in violation of New York’s public policy against racial discrimination, the equal protection clause in New York’s Constitution, New York State and New York City anti-discrimination laws and New York State’s Deceptive Practices Act (based upon the allegedly misleading assertions regarding diversity on the AAA’s website).

The parties are scheduled to return court on December 11th.  At that time, Jay-Z will seek to extend the injunction for a 90-day period to permit the parties to work with the AAA to add additional African-American arbitrators to the roster.  Notably, Jay-Z’s filings do not specify a process to expand the roster or the number of new diverse arbitrators he maintains are required to cure the alleged violations of law and public policy.  Further, his filing also requests a permanent stay of the arbitration if the parties and AAA are unable to cure the alleged violations in the 90-day period.

Whether Jay-Z will succeed in extending the injunction, and the implications for AAA arbitrations beyond the Iconix arbitration if he does, will be the subject of close scrutiny in the coming days.  Stay tuned!

In dueling motions for summary judgment over copyright infringement claims, The Warhol Foundation butts heads with a photographer whose photo was a source for Warhol’s “Prince Series.”

Lynn Goldsmith is a self-described “rock and roll photographer” who has been photographing music legends since the early 1970s. The photograph in question was from a 1981 shoot she did for Newsweek with the late pop star Prince. Goldsmith says she licensed the photo to Vanity Fair for a one-time use as an artist reference for an illustration, and that’s how the photograph ended up in the hands of Pop Art pioneer Andy Warhol. Warhol used the photo as the basis for one of his iconic celebrity portraits, producing 12 paintings, two drawings, and two unpublished prints (the “Prince Series”).

In April 2017, Warhol’s estate sued Goldsmith, asking the court for a declaration that the use of the photo in the Prince Series does not violate Goldsmith’s copyright because Warhol’s works were “entirely new creations.”  Goldsmith responded a few months later, filing a counterclaim for copyright infringement.

Now, the District Court for the Southern District of New York must decide whether Warhol’s use of the photograph infringes upon Goldsmith’s copyright.

The Warhol Foundation argues that the Prince Series doesn’t count as an infringing derivative work because it does not contain any of the protectable elements of Goldsmith’s photograph. “Warhol’s signature silk-screen technique (and, in some cases, freehand drawings) deliberately stripped away every protectable element of the underlying photograph… the result… is that the only commonality remaining between Warhol’s Prince Series and [Goldsmith’s] photograph is the rough outline of Prince’s face – which cannot be copyrighted as a matter of law.”

Furthermore, even if Warhol’s Prince Series does contain derivative works, The Warhol Foundation says that Warhol made fair use of Goldsmith’s photo by “transforming” not only the photograph itself, but also the message it conveys. Among other artistic choices, Warhol: “deliberately cropped Prince’s head so that it appears disembodied… stripped away the range of tones and texture… painted many of the works with multiple layers of bright and exotic acrylic paints; and superimposed a floating, freehand sketch of the outline of Prince’s head.” Warhol transformed the message as well, the Foundation argues, creating an image of Prince “as an icon, not a person,” to comment on the impact of “celebrity and contemporary conditions of life.” The Second Circuit, the Foundation points out, has recognized this very quality in Warhol’s art, noting that “[m]uch of Andy Warhol’s work, including work incorporating appropriated images … comments on consumer culture and explores the relationship between celebrity culture and advertising.” Cariou v. Prince

Finally, the Foundation argues that Warhol’s art market is distinct from Goldsmith’s. While Warhols go for hundreds of thousands of dollars at the finest art galleries and auction houses, Goldsmith typically sells her photographs for low single-digit thousands, primarily through galleries that focus on rock-and-roll photographs and memorabilia.

For her part, Goldsmith cautions that this case may have catastrophic consequences for photographers. She argues a holding that Warhol’s “superficial revisions” constitute transformative use would “give a free pass to appropriation artists and destroy derivative licensing markets for commercial photographers whose works are used without permission.”

It’s worth noting that, in a landmark decision where the California Supreme Court applied the copyright fair use “transformative use test” as the First Amendment test for protected speech in the right of publicity context, the Court specifically pointed to Andy Warhol’s celebrity portraits as a paragon of what should be deemed a transformative use of a celebrity’s image: “Through distortion and the careful manipulation of context, Warhol was able to convey a message that went beyond the commercial exploitation of celebrity images and became a form of ironic social comment on the dehumanization of celebrity itself.” Comedy III Productions, Inc. v. Saderup, Inc., et al. 

Goldsmith points out that things have changed since Warhol’s time: “In today’s digital world, anyone can easily modify a photograph on a computer to add high contrast, coloration and artifacts.” Warhol, she argues, “did little more than that.”

The Southern District of New York will decide if it agrees.


Charlie Nelson Keever is a law clerk in the firm’s Litigation Department, based in its Los Angeles office.

One copyright lawsuit says the answer is “no.”

In a case against Take Two Interactive, the maker of the popular “NBA 2K” video game franchise, Solid Oak Sketches LLC argues LeBron James can license his likeness, but cannot license images of his tattoos due to copyright law.

Solid Oak claims it owns the images of multiple NBA players’ tattoos including LeBron James, Eric Bledsoe, and retired player Kenyon Martin, in a September 22, 2018 filing that opposed Take Two’s motion for summary judgment.

“NBA 2K” games allows users to play simulated NBA basketball games – complete with life-like images of prominent NBA players. With a spot-on depiction and digital recreation of an athlete like LeBron James comes the depiction of his tattoos – many of which are recognizable to fans and gamers alike – and the ensuing battle over who has ownership and control to license those images.

Solid Oak purchased the copyright to the images of the tattoos from actual tattoo artists. Now the company claims it – alone – owns the copyright to the tattoos. Take Two claims that James gave it permission (through the NBA as a third party) to use his name, image, and likeness in the video game. So, who’s right? Both parties could be.

Dual rights in a photo

Solid Oak’s recent motion argues there are two rights that content creators (and licensors) must be aware of when dealing with a photograph. First, the right of publicity, including name, image, likeness and how those can be used commercially. This means James can give a company permission to use his name, photos of him, and generally the way he looks in an advertisement, for example, to generate revenue. Solid Oak does not assert any interest in this right.

What it does assert is that it owns the copyrighted image of James’s tattoos. A copyright contains a bundle of rights, including the rights of reproduction and public display. According to Solid Oak, both of these rights were infringed by depiction of the tattoos in NBA 2K.

As a result, Solid Oak concedes that LeBron James owns his right of publicity, but argues that he has no power over use of the copyrighted image of tattoos on his body.

LeBron James: ‘I Have the Right to Have My Tattoos Visible When People or Companies Depict What I Look Like”

LeBron James feels differently. On Friday August 24, 2018, he testified on behalf of Take Two, stating “my understanding is that the tattoos are a part of my body and my likeness, and I have the right to have my tattoos visible when people or companies depict what I look like.”

Take Two argues that a ruling in Solid Oak’s favor would allow it to “shake down” any TV show or program. This could include NBA games broadcast on TV where well-known players and their tattoos are visible.

Does this mean LeBron James and other players could potentially violate copyright laws by simply appearing onscreen?

Potential Slippery Slope

Take Two argues there is a risk of chilled speech and content suppression if the court rules NBA players must secure licenses from tattoo artists prior to making appearances.

Earlier this year, Take Two argued its use of the tattoo images is protected under the fair use doctrine and the de minimis standard. However, U.S. District Court Judge Laura Taylor Swain declined to dismiss the case in March on either ground, seeking more facts.

One solution could be for NBA players to obtain signed releases from tattoo artists for each appearance depicting the player. The downside is this would significantly increase the burden on players to clear each appearance with a third party, leaving them with little control. This could be the result if the court rules in Solid Oak’s favor.

LeBron James was the highest rated player in “NBA 2K17,” indicating his prominence in the game, particularly with game users. But how big is the market for tattoo licensing? One expert for Take Two claims there is no tattoo licensing market for video games. Now, it is up to the court to weigh expert testimony on user preferences in “NBA 2K” and just how prominently the tattoos are displayed.

The court’s decision will likely affect the longstanding relationship between tattoo artists and NBA players – for better or for worse.


Mikella Persons Wickham is a law clerk in the firm’s Entertainment Department, based in its Los Angeles office.

Among copyright lawyers, Stairway to Heaven may become known not just for its abstract lyrics and acclaimed guitar solo, but also for the legal rulings that upended a jury verdict of non-infringement and sent the parties back to the District Court for a second trial to determine if the classic Led Zeppelin song was the product of copyright infringement.

50664380 - slippery stairs warning signIn brief, the copyright owner of the song Taurus, which was written in 1966 and first performed several years before Stairway to Heaven’s 1971 release, claimed that the latter infringed the former.  Although the jury found that the band, including Stairway to Heaven songwriters Jimmy Page and Robert Plant, had access to Taurus, they found that the two songs were not substantially similar and, thus, that there was no infringement.  The Ninth Circuit’s ruling last week addressed multiple issues, three of which are discussed below.

First, the Ninth Circuit faulted the District Court for its failure to include a jury instruction that the selection and arrangement of non-protectable musical elements is protectable under the Copyright Act.  The opinion notes that this was not a new legal principle and that, more than ten years earlier, the Ninth Circuit had affirmed a substantial similarity finding based on the manner in which five unprotected musical elements appeared in the works at issue in that case.  The Ninth Circuit rejected Defendants’ argument that the omission of the instruction was “harmless error.”  The Court found that the exclusion “severely undermined” Plaintiff’s ability to establish extrinsic substantial similarity, noting that Plaintiff’s expert had testified that the required similarity existed because Taurus and Stairway to Heaven incorporated the same five musical elements (some protected, some in the public domain) in the same way.

Second, the Ninth Circuit ruled that reversal was required because two of the District Court’s jury instructions regarding “originality” imposed too heavy a burden on the Plaintiff.  These instructions stated that (i) elements in the public domain or included in prior works, and (ii) common musical elements like chromatic scales, arpeggios and sequences are not protected by copyright.  The Court faulted these instructions for failing to clarify that the selection and arrangement of non-protected musical elements could qualify for copyright protection and ruled that they “undermined” Plaintiff’s expert’s testimony that Taurus and Stairway to Heaven were substantially similar because of the manner in which they combined unprotected elements.

Third, the Ninth Circuit agreed with the District Court that the Plaintiff could only rely on the copy of Taurus’s music composition deposited with the U.S. Copyright Office, and not also on sound recordings to prove substantial similarity because Taurus was released prior to Congress’s extension of copyright protection to sound recordings in 1972.  Significantly, however, the Ninth Circuit ruled that sound recordings of Taurus should have been played for the jury during cross-examination of Led Zeppelin member Jimmy Page to prove access.  Even though it accepted that the recordings were relevant to access, the District Court excluded them under Federal Rule of Evidence 403 because of its concern that jurors would consider them for purposes of substantial similarity.  The Ninth Circuit deemed this an abuse of discretion that deprived jurors of the opportunity to evaluate Page’s demeanor both when he was questioned about access and when he listened to the recordings.  The Ninth Circuit found the risk of juror confusion “relatively slight” and that it could be “further reduced” by admonishing the jury to only consider the recordings for purposes of access and not also substantial similarity.

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Johnny Depp won a major battle last week in his war against his former attorneys Bloom Hergott LLP.  The firm alleged that it was entitled to a percentage of Depp’s gross entertainment earnings pursuant to an oral fee agreement.  The Court disagreed and found the contract unenforceable.

Bloom represented Depp for nearly twenty years and alleged Depp always directed fee payments to Bloom under their arrangement until July of 2017 when the parties had a falling out.  Depp threw the first punch in October of 2017 for breach of fiduciary duty, legal malpractice, unjust enrichment, unfair competition, and violation of California Business & Professions Code § 6147 which requires attorneys representing clients for a contingency fee to memorialize this agreement in writing.  Bloom swung back counterclaiming for breach of contract and, in the alternative, quantum meruit in pursuit of its unpaid legal fees.

In granting Depp’s motion for judgment on the pleadings as to Bloom’s breach of contract claim, Judge Terry Green found no significant difference between a contingency agreement in the personal injury context (where it is most commonly used) and a percentage agreement in the entertainment industry.  Both involve some degree of risk and invoke § 6147.  That talent attorneys have customarily entered into oral agreements for a percentage of the client’s earnings is irrelevant, held Green.  “I am aware that showbiz people sometimes think they live in a special universe, but they don’t,” Green said.  “I don’t see an exception here.”

Accordingly, pursuant to § 6147(b), Depp can void the agreement and Bloom’s recovery is limited to only a “reasonable fee” for its work.  But Depp does not plan to pay a dime.  He contends nothing is owed given Bloom’s alleged breach of its fiduciary duty in sacking Depp with a hard money loan which resulted in Depp losing approximately $32 million in film residuals.  The loan was purportedly financed by Tyron Management Services, an affiliate of Grosvenor Park Media of which Jacob Bloom is said to be a member on the advisory board.  Depp reports Bloom failed to disclose this alleged conflict of interest and other material information about the loan.

Bloom has yet to comment on the ruling or indicate whether it will appeal.  In the meantime, the parties’ remaining causes of action remain on the table as the case enters the discovery phase.  Trial is set for May, assuming no settlement is reached.