General Entertainment Law News and Updates

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.

The TVEyes v. Fox saga has reached its conclusion. Following the Supreme Court’s denial of TVEyes’ petition for certiorari, the video clipping service had little choice but to settle Fox News’s copyright infringement lawsuit. The parties filed a permanent injunction in the Southern District of New York under which TVEyes agreed to eliminate all Fox News content from its database. This injunction is a final settlement and protects TVEyes from having to defend a claim for damages and attorneys’ fees.

TVEyes is a subscription service that records virtually everything on TV. By syncing the video with closed captioning data, it’s able to make this library searchable by keyword. Subscribers can retrieve 10-minute clips around the keyword. Users include news organizations, the White House, members of Congress and the military. Fox News brought a copyright infringement suit against TVEyes in the Southern District, which TVEyes defended successfully on fair use grounds. The Second Circuit reversed the District Court, primarily on the ground that the clipping service deprived Fox News of licensing revenue that it would otherwise be able to realize.

This case attracted much attention, with free speech organizations such as Wikimedia and the Electronic Frontier Foundation arguing in support TVEyes’ position that its redistribution of clips is “transformative” and serves an important social role.

It remains to be seen whether other content owners will piggyback on Fox News’s success and demand that their content be removed from the site, or whether TVEyes will be able to develop a business model under which they pay for content.

Just over a year ago, the U.S. Court of Appeals for the Federal Circuit held that a century-old ban prohibiting the United States Patent and Trademark Office (PTO) from registering “scandalous” and “immoral” trademarks violates the First Amendment.

Last week, the Supreme Court granted certiorari to determine whether they agree that the so-called “Scandalous Clause” is unconstitutional on its face.

The dispute began when the PTO denied trademark registration to Appellant Erik Brunetti’s clothing line – “FUCT.”  Citing Section 2(a) of the Lanham Act, the PTO argued that it was well within its rights to refuse to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter…”

Brunetti argued, in the first place, that his proposed trademark was not scandalous in the context of contemporary attitudes.  Further, and more notably, he argued that the Scandalous Clause constitutes a content-based restriction on his speech in violation of the First Amendment.

A restriction on speech is considered “content-based” when it “applies to particular speech because of the topic discussed or the idea or message expressed.”  Content-based statutes are presumptively invalid.  To survive, such statutes must withstand “strict scrutiny” review, which requires the government to prove that the restriction (1) furthers a compelling interest and (2) is narrowly tailored to achieve that interest.

Before the Federal Circuit, the government conceded that the Lanham Act’s “Scandalous Clause” is a content-based restriction, and did not contend that it survives strict scrutiny.  Rather, the government argued that the provision doesn’t really restrict speech at all: “Trademark rights are created not by federal law, but by use of a mark to identify goods and services in commerce,” wrote government lawyers in their petition for certiorari.  “Even without federal registration, respondent may use vulgar terms or symbols to identify his goods in commerce, and he may enforce his chosen mark in both state and federal courts against others whom he believes have misused it or have misappropriated any goodwill associated with it.”

Thus, the government explained, trademark registration should be viewed as a government subsidy for marks it wishes to promote rather than a restriction on marks that are excluded.  In that case, the bar on registering immoral or scandalous marks is simply a “reasonable exercise of the government’s spending power.”

This argument, however, may be a more difficult one to make in light of another recent Supreme Court decision on an analogous provision of the Lanham Act.

In 2017, the Supreme Court unanimously held that a provision of the Lanham Act which prohibited the government from registering trademarks that “disparage” others violated the First Amendment.  That case, Matal v. Tam, involved the members of an Asian American rock group (called The Slants) who were turned down by the trademark office when they tried to register their band’s name.  We blogged about that case here.  In Tam, the PTO refused to register “The Slants” as a trademark because they said the name was likely to denigrate a significant number of Asian Americans.  A unanimous Court found the “Disparagement Clause” to be facially invalid, underscoring that prohibiting the expression of an idea simply because “society finds the idea itself offensive or disagreeable” is antithetical to the bedrock principle underlying the First Amendment.

Further, the Court recognized that federal trademark registration confers significant benefits, and that refusal to register marks due to the Disparagement Clause was unconstitutional despite the fact that such marks could still be used. A plurality of justices (and all four who reached the issue) rejected the government’s argument that trademark registration should be viewed as a government subsidy.

Now, Brunetti argues that the “Scandalous Clause” should be similarly dispensed with.

In particular, he challenges the PTO’s history of apparently arbitrary decision-making when it comes to approving trademarks, arguing that this belies their claim that the Scandalous Clause is a content-neutral restriction.

For instance, he points out the office has registered trademarks for “FCUK,” “FWORD,”  and “WTF IS UP WITH MY LOVE LIFE?!”

If there is one thing both sides can agree on, it’s that this issue is ripe for review.  Though, in Tam, the Disparagement Clause was held facially invalid by a unanimous Court, several key issues, including the level of scrutiny that should be applied to similar provisions, were not agreed upon by a majority of the justices.

The Supreme Court will hear Iancu v. Brunetti this Spring.

 

 

 

 

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.

Thumbs down

The Supreme Court turned down the petition of TVEyes for reconsideration of the ruling of the Second Circuit that TVEyes infringed Fox News copyrights. TVEyes is a media monitoring service that records virtually all TV news broadcasts in a searchable database. Subscribers can search for content by keyword and download 10-minute clips from the broadcasts. TVEyes raised a fair use defense against Fox News’s copyright infringement action, citing the importance of its service to media analysis and criticism. It stressed Fox News’s “outsized relevance to national political debate” because of the evident influence of Fox commentary on opinions expressed by President Trump. Fox rebutted this argument by asserting that the case was about nothing more than unauthorized distribution of copyrighted content. The Circuit Court, in applying the four-factor fair use test, found that the economic harm to Fox’s ability to license its own content outweighed the purported benefits of the TVEyes service to public discourse.

 

The Supreme Court denied TVEyes’ cert petition without opinion. The case will go back to the trial court to determine the final scope of TVEyes’ injunction and damages.

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!

The battle of the briefs continued as Fox News urged the Supreme Court to take a pass on a petition for certiorari from TVEyes in a copyright case that has drawn considerable attention. As regular readers will recall, TVEyes records virtually everything on TV into a fully searchable database that it sells to subscribers. Fox News sued for copyright infringement; TVEyes asserted a fair use defense, which was rejected by the Second Circuit. TVEyes is asking the Supreme Court to overturn that decision.

TVEyes based its defense on the contributions its service makes to free speech and media criticism. Easy access to broadcast content, it argued, is essential for critics, commentators and researchers to keep pace in a chaotic and polarized media environment. TVEyes also asserted that the Circuit Court gave too much weight to the alleged economic harm to Fox when it applied the notoriously slippery four-factor fair use test.

Fox challenged the basic premise of TVEyes’ argument. “The Second Circuit’s holding does not concern political dialogue, commentary, criticism, or the First Amendment,” it wrote. “Criticism of the media is alive and well, and is in no way dependent on TVEyes’ efforts to profit from copying and distributing the media’s copyrighted content.” According to Fox, the supposed social value of TVEyes’ service is no more than a smokescreen to persuade the Court to overturn a ruling that “does not implicate a split in the circuits, involve an important unsettled question of federal law, or otherwise raise a cert-worthy issue.”

The network also argued that the Second Circuit’s application of the fair use factors does not deserve review. That court’s “careful balancing of the four-factor fair use test was an inherently fact-bound exercise, and TVEyes’ narrow disagreement with the court’s finding as to one of those four factors does not begin to warrant this Court’s attention.”

The parties’ differences could not be more stark. Will the Supreme Court let the Second Circuit decision stand, or hear the case and create a fair use precedent the could be of great importance?

We report, you decide.

 

This post is authored by Fox Rothschild partner Christopher P. Beall:

The much ballyhooed case involving copyright and trademark claims against the producers of the Netflix television series The Chilling Adventures of Sabrina reportedly has ended, with news media reporting – based on a statement from counsel for the Satanic Temple (giving new meaning to the phrase “devil’s advocate”) – that the case has been resolved.

The television show’s attorneys confirmed the fact of the settlement, but disclosed no details.  News reports indicate that the confidential settlement will mean that “the unique elements of the Satanic Temple’s Baphomet statue will be acknowledged in the credits of episodes which have already been filmed.”  No information was provided as to whether the television show’s producers agreed to pay the Satanic Temple a license fee for use of the Baphomet image.

The underlying case, filed earlier this month in federal court in Manhattan by United Federation of Churches, an organization that operates under the name The Satanic Temple and advocates for religious liberty issues, had claimed infringement based on a statue used in certain episodes of the television series which was remarkably similar to the Satanic Temple’s Baphomet statue.  Because of the similarities between the parties’ statues, as well as the fact that the Satanic Temple had obtained copyright registrations for its own work, it was likely that this case was headed for costly litigation over difficult questions under the Fair Use Doctrine.  The fact that the case has settled means that the show’s producers can now focus on keeping Sabrina out of the clutches of warlocks, goblins, and other teen nemeses, rather than immersing themselves in the “transformative use” doctrine.

The rest of us will just have to wait for the next juicy fair use case to sink our teeth into.

 

–Christopher P. Beall

This post is authored by Fox Rothschild partner Christopher P. Beall:

Sabrina Spellman, she of the twitchy, witchy Archie Horror comic world in the Netflix reboot The Chilling Adventures of Sabrina, released last month with two 10-episode seasons, already has her hands full, what with teen angst, lust, occult powers, and a coming of age quandary.

Now, though, she also has those hellhounds known as lawyers on her trail.

The case, United Federation of Churches v. Netflix, was filed last Thursday (11/9/2018) in Manhattan federal court, asserting claims of copyright infringement and trademark dilution, on the basis of the television show’s use of a Baphomet sculpture as part of the set of the Academy of Unseen Arts, a prep school for witches that Sabrina attends.

The sculpture in the show bears striking similarities with a sculpture created by the plaintiff, which operates under the name The Satanic Temple, when the Temple battled for equal rights for its monument in Oklahoma after a court fight involving a monument of the Ten Commandments.  When the Oklahoma Supreme Court held that the Ten Commandments display at the Oklahoma State Capitol was prohibited as an unconstitutional establishment of religion on public property, the Temple dropped its effort to install its Baphomet sculpture there.  It has, however, indicated it wishes to install one of its sculptures at a similar display in Arkansas.  The Temple’s Baphomet sculpture attracted worldwide attention when it was unveiled at ceremony in Detroit in 2015 (https://www.bbc.com/news/magazine-33682878).

In the new case, the copyright claim here presents important questions focused on the intersection of free speech and copyright rights.  The Baphomet figure is itself an occult image that dates back at least 160 years, and in that sense, the original source of both the Temple’s sculpture and the Sabrina set is in the public domain and free for anyone to use.  However, the Temple’s sculpture – and the Sabrina set – use a unique composition of two children, a white girl and a black boy, staring fawningly up at the godhead.  (The public domain version of Baphomet is also different in that it is a hermaphrodite with female breasts, whereas the version created by both the Temple and for the television show depicts a well-muscled male chest.)

Because it appears that at least significant parts of the television show’s version of the Baphomet figure imitate the Temple’s sculpture, and because the originality of the Temple’s sculpture has been confirmed, at least at a prima facie level, through a copyright registration obtained by the Temple, the resolution of this case likely will come down to the notoriously flexible standards of the Fair Use Doctrine.  In that regard, the court will have to wrestle with the conundrums of whether the television show’s depiction of Baphomet is a critique or commentary on the Temple or the Temple’s sculpture, whether the Sabrina version is transformative because of its setting in a fictional school for witchcraft, and whether this latest version harms the market value of the Temple’s sculpture.  Ironically, on that last factor of the fair use analysis, the Temple’s lawsuit itself may in fact undercut its own case because of the instant celebrity created for the Temple’s sculpture by virtue of the news coverage of the litigation.

The Temple also asserted trademark dilution claims. These do not appear to be viable for a variety of reasons including the fact that the Temple’s sculpture cannot be said to be “famous” nationally, or even in New York,

While Sabrina might have solved this challenge with one of her magic spells (or a production lawyer who pushed back on the clearance work for the show’s set design), the court here will now have to untangle a very interesting copyright riddle that goes to the core of just how much free expression is allowed when using copyrighted imagery.