Litigation and Statutory Developments

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.

 

The U.S. Court of Appeals for the Fourth Circuit ruled last week that deceptive editing in Katie Couric’s gun violence documentary did not rise to the level of a defamatory statement to support a defamation action.

The suit centers on a twelve-second clip in the documentary, Under the Gun.  The film concerns gun policy in America and takes a perspective favoring regulation.  In a three-minute segment of the film, Couric interviews members of the Virginia Citizens Defense League (“VCDL”), a non-profit gun-rights organization.  Couric poses a series of questions on gun policy, which prompt detailed responses from the VCDL members. At the close of the segment, Couric asks: “If there are no background checks for gun purchasers, how do you prevent felons or terrorists from purchasing a gun?”  In the documentary, her question is followed by nine seconds of silence, during which the VCDL members are shown shifting uncomfortably in their seats and averting their eyes and appears to imply that they had no answer for that question.

In the unedited version, however, Couric’s background check question prompted approximately six minutes worth of responses from the VCDL members, and another three minutes of related discussion between Couric and the panel.  Rather than use these responses in the documentary, however, the filmmakers spliced in b-roll footage (taken before the interview even began) which depicted the interviewees sitting in silence while technicians calibrated the recording equipment.

Following the release of the film, VCDL produced the unedited audio of the interview.  In the public backlash that followed, Couric issued a statement admitting that the documentary did “not accurately represent [the VCDL members’] response” and that the segment was “misleading.”

Members of the VCDL filed a defamation suit in the Virginia district court against Couric and others associated with the production and distribution of the documentary.

To state a claim for defamation under Virginia law, the VCDL interviewees needed to plead three elements: “(1) publication of (2) an actionable statement with (3) the requisite intent.”  The case turned on the second element: whether the statement – in this case, footage edited to convey silence and thus imply that the interviewees had no answer for a particular question – is actionable. To be “actionable,” a statement must be “both false and defamatory.”

In the alternative, Plaintiffs argued that the interview portion of the film was defamatory per se to Daniel Hawes (an attorney and member of the VCDL), Patricia Webb (the owner of a gun store), and the VCDL itself as a pro-Second Amendment advocacy organization because the film could “reasonably be understood to suggest that [Plaintiffs were] unfit in [their] trade.”

The district court held (and the Appellate Court affirmed) that Plaintiffs’ arguments failed on both accounts.

First, although the Court acknowledged that statements can often be found to have a defamatory meaning even through implication alone, it found that, in context, the edited footage was “not reasonably capable of defamatory meaning.”  The Court pointed out that the disputed segment comes on the heels of several other questions concerning background checks, and the panelists’ answers to all of those questions are included in the film.  Thus, although the Court allowed that the film gives the impression that Couric’s final question stumped the panelists, the “plain, ordinary meaning” of the edited segment conveys only “that these particular members of the VCDL, after answering a series of related questions, did not have a ready-made answer to a nuanced policy question.”

The Court made clear that it did not decide whether silence under Virginia law can ever satisfy the statement requirement of a defamation cause of action – merely that it failed to do so here.

Second, the Court rejected the VCDL’s argument that the misleading film clip constituted defamation per se.  As to Hawes, the Court concluded that the questions posed to him about background checks had nothing to do with his legal practice or expertise. Similarly, the Court found that the film is “not reasonably capable of suggesting that Webb is unfit to own a gun store” because the job does not require a nuanced view on gun policy. “Had the film suggested that Webb did not know, for instance, whether a gun store owner must perform a background check, this might be a different case,” the Court observed, but, as the district court explained, “[n]ot having an answer to a specific question about effective alternatives to background checks does not imply anything about fitness to own a gun store and to sell guns.”

Finally, as to the VCDL itself, its argument that the footage implies that it is unfit as a pro-Second Amendment advocacy organization would “require the Court to extend the film’s meaning well beyond what the clip shows.”

Though the Court agreed that the filmmakers’ editing choices were “questionable,” it found that the edited footage itself “simply does not rise to the level of defamation under Virginia law.”

The case may be good news for producers of narrative media, but worrisome in an era where truthful reporting – including the honest characterization of one’s subject – is more important than ever.  The case is also a good starting point for any journalism professor tasked with teaching the law and ethics of journalism:  the court certainly supplied the “could you legally do it?” answer, but the “should you do it?” discussion is a worthy one indeed for all future journalists.

The case is Va. Citizens Def. League v. Couric, 4th Cir., No. 17-1783, 12/13/18.

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. Walker 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, Walker’s decision is not anticipated until next spring and will likely be appealed regardless of the outcome.

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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.

 

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Cody Lundin’s lawsuit against Discovery for allegedly defaming Lundin in its reality series “Dual Survival” was voted off the island earlier this month when a district court in Arizona granted Discovery’s motion for summary judgment.  Lundin’s claims arose from an episode titled “Journey’s End to a New Beginning” which depicted Lundin walking off the program after clashing with the show’s co-host Joe Teti.  Lundin alleged the episode advanced the “false narrative” of him “walking off the show in disgrace as a burned-out, irrational, incompetent and mentally ill has-been.”

In granting Discovery’s motion, District Judge Roslyn O. Silver noted that although “Dual Survival” is hardly a “reality program,” it did not misrepresent Lundin’s behavior.  Silver found “Lundin was happy to participate in the charade as long as he was portrayed in the manner he preferred.”  What charade you ask?  Silver cited several examples in the case record that reflect “Dual Survival” is far more scripted than “real.”  For instance, Silver wrote “Dual Survival” often portrayed the hosts as having little access to food and water.  In reality, Silver found the hosts enjoyed breakfast and dinner at resorts, hotels, and lodges, and also receive catered lunches on location.  In addition, Silver noted multiple scenes in which “wild” animals were placed on set to be “hunted” by Lundin and Teti.

But when it came to the episode’s portrayal of Lundin, Silver found the depictions were accurate or, at least, substantially true.  For example, Lundin objected to a scene in which he is shown angrily throwing objects at Teti.  Lundin claimed this scene was the “cornerstone piece of the false narrative” that made Lundin appear incompetent and mentally ill.  Yet, he admitted he was angry; just not with Teti.  Lundin was upset with a producer who allegedly instructed Lundin to throw the items in this fashion.  Silver found the scene accurately portrayed Lundin’s emotional outburst, and whether it was directed to a producer or Teti was immaterial.

Lundin also objected to scenes in which he cursed at Teti and that these statements were rearranged to fit into different points in the dialogue.  Silver, again, found this depiction of Lundin to be substantially true since Lundin actually uttered those words and was upset with Teti when the statements were played in the episode.

Moreover, some of the scenes to which Lundin objected were judged to be completely true.  For instance, Lundin is portrayed laughing at Teti as Teti struggles to kill a rattlesnake.  Teti’s on-screen statements that the snake is dangerous and that this is no laughing matter, Lundin argued, cast a false light on Lundin suggesting he is a “seriously mentally ill basket case” to find humor in such peril.  In reality, Lundin claims he was laughing at Teti’s incompetence and not at a situation in which someone could become seriously hurt, and that Discovery should have provided this context to the viewers.  Silver disagreed and found this depiction of Lundin to be factually accurate because he was truthfully shown laughing at Teti as he tried to kill the snake.

On a broader level, Silver found Lundin failed to demonstrate how any portion of the episode posed a serious threat to his reputation or, at a minimum, casted Lundin in a highly offensive light.  To the contrary, Silver determined the episode at several points displayed Lundin in a positive light, commending his mastery of the art of survival and calling Lundin’s departure a “big blow” to the program.

Lundin has until December 2, 2018 to file a notice of appeal.

Shortly after the 2015 debut of the hit Fox Television show Empire, Clayton Tanksley sued the studio, distributor, producer and creators of Empire for copyright infringement and related claims in the United States District Court for the Eastern District of Pennsylvania.  Tanksley’s claims stem from an alleged 2008 meeting with Empire’s creator and producer, Lee Daniels during a film competition sponsored by the Greater Philadelphia Film Office called Philly Pitch.  (The Film Office also was sued by Tanksley.)  Following the event, Tanksley claims to have discussed with Daniels a three episode television series he created and copyrighted called Cream, which was about an African American record executive who runs his own hip-hop label.  He also claimed to have provided Daniels with a DVD and script for the Cream series.  Tanksley’s complaint alleged that Cream and Empire are “strikingly substantially similar” in many respects, including the main and supporting characters, scenes and the overall themes of both works.

Copyright law protects the expression of ideas but not the ideas themselves.  Thus, in order for a plaintiff to prevail in a copyright infringement action he must demonstrate substantial similarity in the protected expression between the two works and not merely the fact that they share similar ideas or themes.  In dramatic works such as Empire and Cream, scènes à faire or plot elements that flow predictably from a general idea are unprotected.  For example, in “a film about a college fraternity … parties, alcohol, co-eds, and wild behavior would all considered scènes à faire and not valid determinants of substantial similarity.”  Tanksley v. Daniels, et al., No. 17-2023, p. 16, — F.3d – (3d. Cir. 2018).

Under that standard, the defendants moved to dismiss the complaint, arguing primarily that the two works were not substantial similar in protected expression.  In deciding defendants’ motion, the court performed a side-by-side analysis of Empire and Cream to determine whether a lay-observer would believe that the copying was of protectable aspects of Tanksley’s series.  The trial court granted the motion to dismiss, finding that the two works contain “dramatically different expressions of plot, characters, theme, mood, setting, dialogue, total concept and overall feel.”  And while the general idea of the two series revolved around African American music moguls, that was not protectable under copyright law.

Tanksley appealed to the Third Circuit raising primarily two arguments:  (1) the question of substantial similarity is too fact-intensive to be resolved on a motion to dismiss; and (2) the trial court erred in finding no substantial similarity between Empire and Cream.  As to the first argument, the court determined that certain works, including dramatic works, may be evaluated in a side-by-side comparison at the motion to dismiss stage and dismissed if “no trier of fact could rationally determine the two works to be substantially similar.”  The appellate court rejected plaintiff’s argument that the trial court erred in rendering its decision without the benefit of witness testimony, documentary evidence or expert analysis holding this was irrelevant to the dispositive question of how the two works would appear to a layman viewing them side by side.

As to the second argument, the Third Circuit determined that the trial court properly concluded that there was no substantial similarity of protected expression between Empire and Cream.  As the court concluded, aside from superficial, general similarities between the two shows, they were not substantially similar as a matter of law.  “The shared premise of the shows – an African-American, male record executive – is unprotectable.  These characters fit squarely within the class of ‘prototypes’ to which copyright protection has never extended.”  Thus, the Third Circuit agreed with the trial court that as to the protectable expression of plot, characters, theme, mood, setting, dialogue, total concept, and overall feel, no reasonable jury could conclude that Empire and Cream were substantially similar.

We last blogged here about the Second Circuit’s denial of TV Eyes’ fair use defense in a lawsuit brought by Fox News. Now the Wikimedia Foundation (owner of Wikipedia), joined by other free press advocacy groups, have filed an amicus brief in support of TVEyes’ petition for the Supreme Court review.U.S. Supreme Court building in Washington, DC

TVEyes is a subscription service that records massive amounts of television content and compiles it into a searchable database of 10-minute clips. Its subscribers range from the New York Times to the Department of Defense. Fox News brought a copyright infringement action against TVEyes in 2013. The Second Circuit handed down a decision in February upholding the network’s claims. TV Eyes has appealed this decision to the Supreme Court.

The Wikimedia brief warns of dire consequences if the circuit court ruling is allowed to stand, stating that it permits copyright owners to “stifle criticism and undermines established fair use principles that are vital for media commentary.” It notes further: “In today’s fast-paced and increasingly polarized media landscape, researchers, commentators, and critics must be able to record, search, watch, and compare the original visual recordings of relevant broadcasts. Such comprehensive tools can only be maintained by commercial services like TVEyes.”

The amici questioned the Second Circuit’s balancing of the four fair use factors. The court found the fourth factor dispositive, in that the TVEyes service harmed the ability of Fox News to benefit from its copyrights by licensing clips directly. The Wikimedia brief challenges that conclusion, asserting that the existence of a direct market for Fox News clips is “theoretical,” and one that Fox would be “unlikely to authorize.”

Fair use analysis always requires a balancing of the copyright holder’s statutory monopoly against the benefits of free dissemination of content. Frequently, this involves purely commercial interests on both sides, but some fair use cases, particularly those involving matters of public concern, implicate larger values. It has been 20 years since the Supreme Court issued a major fair use decision. Advocates on both sides will be watching to see whether it will use this case to clarify a contentious doctrine.