General Entertainment Law News and Updates

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.

 

 

The post below was first posted by my colleague Jeff Polsky on the Fox Rothschild California Employment Law blog. We are reprinting it here because the recent California Supreme Court decision that it describes will have tremendous impact on the way many producers do business.

It’s common practice for producers to engage cast and crew as independent contractors rather than as employees. This will now be far more problematic, at least in California. Anyone who engages personnel in this state should read this blog and take a hard look at their hiring practices.


Jeff Polsky writes:

Determining whether a California worker is an independent contractor or an employee has always been difficult. Judges deciding the issue have complained that the test used by California courts “provides nothing remotely close to a clear answer.” Then there was the nail salon that was told by one state agency that its workers were employees and by another that they were independent contractors. So there’s no question that the law in this area has been messy.

On Monday, it got considerably messier. That’s when the California Supreme Court issued its decision in Dynamex Operations West, Inc. v. Superior Court. For years — even decades — judges, government agencies, and lawyers have interpreted the law to say that the key to distinguishing between employees and independent contractors was whether the company had the right to control the manner and means by which the worker accomplished the desired result. So if drivers for a gig-economy car service decided what days to work, when to start work on a particular day, where to work, what to wear, when to take breaks and for how long, and when to quit for the day, there was an excellent chance that they’d be considered independent contractors,

Under the California Wage Orders, which guarantee employees a minimum wage, maximum hours, overtime compensation, meal and rest breaks, and more, that is no longer the case. Now, according to the California Supreme Court, companies must meet a three-prong test to establish independent contractor status (“the ABC test”).

  • A) The company must not be able to control or direct what the worker does, either by contract or in actual practice. This is similar to the test used in the past.
  • B) The worker must perform tasks outside of the hiring entity’s usual course of business. So if you’re a driver for a ride service, a delivery person for a delivery service, or a seamstress for a clothing company, you can’t be an independent contractor no matter how little control the company has over you.
  • C) The worker must be engaged in an independently established trade, occupation, or business. It’s not enough that the company doesn’t prohibit the worker from having his own business or working for others. Instead, the court will look at factors such as whether the business is incorporated or licensed, whether it’s advertised, and whether it offers services to the public or other potential customers.

It is the employers burden to satisfy all three prongs to establish that the worker is an independent contractor. If it fails to establish one, the worker is entitled to be treated as an employee under the Wage Orders. (The Wage Orders themselves are not particularly helpful in this regard. For example, they circularly define “employee” as ” any person employed by an employer.”)

The Court spent 80+ pages explaining its rationale. Nowhere in that lengthy analysis was any recognition of the upheaval this opinion will cause. Millions of workers in the state that were considered independent contractors will now be deemed employees. This will require employers who have done everything they could to follow the law as it was then understood to reevaluate the nature of the relationship with many of their workers and either modify the relationship or provide them the pay and treatment required by the Wage Orders. They also face litigation, including potential class actions, from workers complaining that they were misclassified. And since this case only addresses the wage order definition, they need to apply different standards (which can lead to different conclusions) in deciding how to characterize workers for purposes such as workers compensation and payroll taxes. As I said, a messy situation just got messier.

Laurie Baddon writes:

It has been a tough couple of weeks for Sinclair Broadcast Group, Inc. First, news broke that its anchors were required to read an identical script cautioning viewers about “fake news” and questioning the integrity of media organizations. Now, reports claim that Sinclair’s employee agreements may make it too expensive for these anchors to quit due to liquidated damages provisions in their contracts. While we have not reviewed the alleged Sinclair employee agreements, the news raises some important issues for employers to keep in mind when creating employment agreements, especially in California.

Some reports indicate that the Sinclair agreements allegedly require employees to pay as much as 40% of their annual compensation to the company in liquidated damages for leaving before the term of their contract expires. While employers may protect themselves from the costs associated with an employee voluntarily leaving their employment prior to the expiration of the contract term, it is rare for liquidated damages to be so high. When employment agreements include liquidated damages for an employee voluntarily quitting prior to the expiration of the contract term, the parties will agree on an amount related to the employer’s cost to recruit and train a replacement. Requiring an employee to pay 40% of their annual compensation in liquidated damages is steep and sounds more like a penalty, which courts would likely disfavor.

The agreements also allegedly contain a clause that Sinclair may fire an anchor who suffers a disability. At first glance, without more context, this looks to be problematic as well. Although it is not unheard of for employee agreements for high-level executives (or in this case for anchors) to include a clause that the employment relationship may be terminated due to the employee being “permanently” or “totally” disabled; this usually means that the employee is unable to perform the essential functions of the position, even with reasonable accommodations, for a specified period, such as 90 consecutive days or 180 days in any 365-day period. Nevertheless, it is extremely important that employers consult with counsel and are cautious when including these clauses to not conflict with state and federal law.

Additionally, the Sinclair agreements allegedly contain non-compete clauses. While non-competes may be enforceable in other states, they are likely to be void in California. This should serve as a reminder of how imperative it is for employers to tailor agreements and policies to the specific jurisdictions in which employees work.

It is important to keep in mind that the issues raised by the Sinclair agreements are rare. The vast majority of employees in California will likely never see an employment agreement like the Sinclair agreements because most employees are “at-will” meaning they can terminate their employment for any reason at any time just as the employer can terminate the employment relationship for any non-discriminatory reason at any time.

In any event, with Sinclair looking to acquire some additional 215 stations across the country, there may be a whole lot more new employees reviewing, scrutinizing, and publicizing the Sinclair agreements. It will be interesting to see how much push back Sinclair will get.


Laurie Baddon is an associate in the firm’s Labor & Employment Department, based in its Los Angeles office.

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.

The digitization of content is forcing courts to take a fresh look at basic copyright concepts. The Disney v. Redbox case that I’ve recently blogged on addressed whether a digital download code is a “copy” of a work. Now a New York District Court has taken up the meaning of “display” in a case that could have big consequences for the way news outlets do business.

A photographer named Justin Goldman snapped a candid photo of New England Patriots quarterback Tom Brady with Boston Celtics general manager Danny Ainge. Goldman posted the photo on Snapchat, whence it went viral, including on Twitter. The defendant news outlets, including Breitbart, Time and the Boston Globe, embedded the tweets together with the photo in stories concerning whether Brady was assisting the Celtics to recruit a player named Kevin Durant. Goldman sued for copyright infringement. The defendants moved for summary judgment on the ground that they had merely linked to an image hosted on Twitter’s servers and did not themselves maintain copies.

Judge Katherine Forrest rejected this position. In her view, the location of the server on which an image is stored is merely a technical distinction that is not relevant to whether the copyright owner’s display right was infringed. Judge Forrest acknowledged that this view is contrary to the position of the 9th Circuit, but held that it is supported by Supreme Court precedent and the language and legislative history of the Copyright Act.

This decision does not necessarily mark the end of the road for the news organizations, however, In response to their plea that a loss would “cause a tremendous chilling effect on the core functionality of the web,” the judge stressed that they still have strong affirmative defenses. A fair use argument is always available, particularly to straight news organizations. The judge also raised the possibility that Goldman had released the photo into the public domain by posting it to Snapchat in the first place.

There’s a certain logic to Judge Forrest’s conclusion that the viewer’s experience of a photo is the same whether the defendant has copied it to its own server or linked to someone else’s. On the other hand, a central feature of Twitter and other social media platforms is that posts can be readily shared. The ecosystems of these platforms could be seriously disrupted if every shared post is regarded as a new publication for copyright purposes. Courts and possibly Congress will be working for the next several years to draw the appropriate lines.

In response to the numerous allegations of pervasive sexual harassment in the entertainment industry, SAG-AFTRA, the union representing performers, recently adopted a “Code of Conduct” for handling sexual harassment claims against producers.  As the representative of performers across the country, it is only natural that SAG-AFTRA would seek to address the sexual harassment scandal that has pervaded the industry. The opening of this new front against sexual harassment may provide support for more performers to come forward and bring claims against producers.

Casting call - actors waiting at a casting sessionThe Code of Conduct provides a resource for performers to assist them in filing civil and criminal complaints against their employers, as well as processing claims under the collective bargaining agreements (CBA) between SAG-AFTRA and the Producer’s Alliance.  It also ominously claims that the union is “willing to use the union’s enforcement powers to protect our members, including directing them not to work for employers who will not keep them safe.”

SAG-AFTRA, as a labor union, has certain powers and limitations in advancing the interests of its members.  In terms of legal claims, the union can point performers in the right direction, or possibly pay for legal counsel (which is not mentioned in the Code), but it is unlikely that it could directly bring sexual harassment claims in court on behalf of members. Unions are typically bound by the grievance and arbitration procedures contained in their CBAs. In addition, the union is also subject to conflicts in terms of member-on-member sexual harassment, which could lead to inaction or delays on behalf of the accuser. Finally, like most unions, SAG-AFTRA is bound by a no-strike clause in its CBAs, which would likely limit its ability to carry through on its threat to direct members not to work for certain employers.

Law concept: circuit board with copyright icon, 3d renderRedbox scored a win in its copyright dispute with Disney as a federal district court judge refused to award the studio a preliminary injunction against Redbox’s sale of digital download codes.

Disney’s complaint was that Redbox was purchasing “Combo Packs” of Disney movies, which include a DVD, Blu-Ray disc and digital download code, opening the packages and selling its components separately. This, Disney claimed, encouraged consumers to violate the terms of copyright licenses set forth on printed inserts in the Combo Packs and warnings on the download websites Disney Movies Anywhere and RedeemDigitalMovies, which purport to restrict use of the codes to owners of the physical discs.

Redbox had thrown up two defenses to Disney’s copyright claim. First, that the download codes are equivalent to the physical discs under the first sale doctrine. Second, that Disney was guilty of “copyright misuse.”

The parties’ briefing focused primarily on the applicability of the first sale doctrine. This provides that once a copyright owner sells a particular copy of a work, such as a book, it cannot prohibit the buyer from subsequent sales or transfers of that copy. Redbox contended that the paper slip bearing the download code constituted a particular copy of the movie no less than the DVD and Blu-Ray discs in the Combo Packs. Disney conceded that the first sale doctrine applied to the DVD and Blu-Ray discs in the Combo Packs, but maintained that the download codes were not copies of the movies at all, but only keys by which consumers could then create copies of the work on their own computers. The court sided with Disney on this issue, holding that no “copy” existed at all until the consumer activated the code and downloaded the movie.

Somewhat surprisingly, despite the attention paid by the parties to the issue, the court held that the first sale doctrine was not applicable to the case because Disney’s misuse of copyright was sufficient to tip the scales in Redbox’s favor. The copyright misuse doctrine furnishes a defense to an infringement claim when a copyright owner is found to be leveraging its limited monopoly under copyright to obtain benefits outside the scope of the copyright monopoly. In one leading case, for example, the owner of a copyrighted medical coding system attempted obtain an unfair advantage over competitors by conditioning licenses of its system on a promise that the licensees would not use competing systems.

In Disney’s case, the court held that it was a misuse of copyright for it to try to link its legitimate right to restrict transfers of the download codes to a waiver of consumers’ conceded right to transfer the physical discs. The license agreements for digital downloads of the Disney movies on the RedeemDigitalMovies requires redeemers to represent that the are currently “the owner of the physical product that accompanied the digital code at the time of purchase.” Similarly, the terms of use on the Movies Anywhere website only allow registered members to “enter authorized . . . Digital Copy codes from a Digital Copy enabled . . . physical product that is owned by [that member].” The court viewed these conditions as overreaching, stating, “Thus, Combo Pack purchasers cannot access digital movie content, for which they have already paid, . . . unless they forego their statutorily-guaranteed to distribute their physical copies of that same movie as they see fit.”

The court also rejected Disney’s breach of contract claim against Redbox. The outside of the Combo Pack box contained the notice “Codes are not for sale or transfer.” This, Disney claimed, established a binding contractual obligation on Redbox not to resell the download codes. Although the court acknowledged that notices printed on packaging can create enforceable obligations, it held that the notice on the Combo Packs was insufficient to do so.

This case presents an interesting takeaway. Although Disney prevailed on the first sale issue, which both parties apparently believed would be determinative, it lost on more mundane issues going to the wording of its license terms. It’s possible that with clearer and narrower drafting Disney will be able to accomplish its goal of preventing resale of download codes. In the meantime, even without a preliminary injunction in place, Disney could continue to pursue this case to trial.

Redbox and Disney have filed their briefs in preparation for argument, scheduled for February 5, on Disney’s motion for a preliminary injunction against Redbox’s alleged copyright infringement. The judge’s ruling could make new law on the meaning of a “copy” in the digital age.

The underlying facts are these: Redbox legally purchased “Combo Packs” of Disney movies. These included DVD and Blu-Ray discs as well as a code by which the purchaser could download a copy of the movie. Redbox unbundled the packs and sold the download codes to consumers.

As Disney anticipated in its original motion, Redbox’s principal defense relies on the first sale doctrine under copyright law, which allows someone who lawfully acquires a “copy” of a copyrighted work to sell or dispose of that copy. Redbox claims that a download code is legally indistinguishable from a physical copy such as a DVD. Just as the first sale doctrine permits it to rent DVDs through its ubiquitous red kiosks, it can resell the download codes on its website.

Disney asserts that the codes are not themselves copies of the films but rather keys to open up a copy. Therefore Redbox’s activities do not implicate the distribution right in the movies (which would be permitted under the first sale doctrine), but the reproduction right, which is infringed when Redbox’s customers make unauthorized copies by using the code.

One interesting consequence of Disney’s position is that its claims against Redbox can only be based on contributory rather than direct infringement of Disney’s copyrights. Since Disney’s position is that the codes are not “copies” of the movies (and thus outside the first sale doctrine), it cannot assert that Redbox is distributing or reproducing its copyrighted works. The direct infringers are the Redbox customers who use the codes. Redbox contributes to the infringement by selling the codes. This argument raises the further question whether consumers are, in fact engaged in infringing activity.

In order to establish this, Disney relies on the “shrink wrap license” that governs its sale of the codes. The Combo Packs are packaged and priced to be sold as a unit. The outside packaging of the Combo Packs states that “codes are not for sale or transfer”; similar language appears on the package insert containing the code. A consumer redeeming the codes on the Disney portal is likewise required to represent that he or she is “the owner of the physical product that accompanied the digital code at the time of purchase.” A customer buying a code would not see the first two of these warnings. Redbox used this fact to argue that Disney was trying to impose the terms of a license between Disney and Redbox on to its customers. Disney’s response is that the license terms to which customers agree before downloading a movie from the Disney portal are sufficient to create the underlying infringement on which Redbox’s contributory liability rests.

This lawsuit is one of a number of recent cases testing the status of links and download codes under copyright law. Playboy Entertainment Group has commenced litigation against a website that posted links to a third party site displaying every Playmate photo ever published. Although the content of the copyrights at issue in that case could not be more different from the family-friendly content of the movies at issue in the Disney-Redbox litigation, they both address the problem of defining what constitutes digital copying and distribution of copyrighted works.