Crazy Copyright Cases

C
N
. WEIMA
E
D
R
A
BY EDW RIC W. MAY
and E
FORTH
IONS BY
AT
ILLUSTR
HAL MAY
ERTAINLY, LAWYERS IN EVERY PRACTICE AREA HAVE ENCOUNTERED DISPUTES THAT DEFY ALL
reason—either because the subject matter is bizarre, or the parties are bizarre, or both. But for
intellectual property practitioners, cases that skirt the edge of rationality (and sometimes leap
over it) are even more common, perhaps because the law in this area often concerns creative
works and the artistic process. Take, for example, the lawsuit brought against 20th Century
Fox by publicist Ivy Supersonic, who claimed the studio had infringed on her “Sqrat” squirrelrat hybrid character creation (See Silberstein v. Fox Entm’t Group, Inc., 536 F. Supp. 2d 440
(S.D.N.Y. 2008)), or the copyright claim asserted against Google by the makers of a giant, blue
inflatable gorilla (Scherba Indus. v. Google, Inc., No. 10-2288 (N.D. Ohio complaint filed Oct.
7, 2010)). There is no shortage of wonderfully weird disputes in this area, and the handful
summarized here all deserve a place in the annals of copyright history.
Edward E. Weiman is a partner and Eric W. May is an associate in the Los Angeles office of Kelley Drye & Warren. They
represent clients nationwide in entertainment, intellectual property, insurance, and general business litigation.
30 MAY 2012 CALLAWYER.COM
“Crazy Copyright Cases” originally published in the May 2012 issue of California Lawyer.
Reprinted with permission. ©2012 Daiily Journal Corporation, San Francisco, California.
SOUNDS OF SILENCE
Copyright protection has been well established to extend
to ideas “fixed in any tangible medium of expression,”
such as drawings, sheet music, or sound recordings. (17
U.S.C. § 102(a).) For their part, sound recordings are
defined as “works that result from the fixation of a series
of musical, spoken, or other sounds.” (17 U.S.C. § 101.)
Nonetheless, in an incident that was widely reported a
decade ago, the estate of composer John Cage was said to
have raised legal objections when British composer Mike
Batt inserted a minute of silence as a divider between sections on an album he produced. Batt credited the minute
of silence to “Batt/Cage” in homage to Cage’s famous composition 4’33”, a work composed of three silent movements of different durations which when added together
total four minutes and 33 seconds of silence. Batt, in an
effort to distinguish his silence from
Cage’s, argued tongue-in-cheek that
his composition was superior to
Cage’s since Batt’s silence was
digital, while Cage’s was analog. The parties apparently
settled their dispute out of
court after they performed
their respective silences in
front of an audience, with
Batt conducting an eightpiece classical ensemble
through one minute of
silence, and a solo clarinetist silently performing
Cage’s 4’33”.
There are two interesting
footnotes to this dispute. First,
Batt claims to own the rights to
many other silent compositions of
various lengths, which begs questions that
were the subject, in part, of at least one scholarly article on
the question of copyright protection for minimalist art
(Rikki A. Sapolich, When Less Isn’t More, 47 Idea 453,
470–72).
Second, and more intriguing, is that the Cage-Batt dispute may not have actually happened. Despite much publicity in 2002, Batt recently suggested that the incident
may have been an elaborate, avant-garde joke intended to
foment debate about copyright issues. If so, it succeeded.
After all, you’ve followed the discussion this far, haven’t
you? Read on. We promise that the rest of the conflicts in
this article actually took place.
THOU SHALT OBTAIN A COPYRIGHT
Attempting to copyright absolute silence is one thing, but
what about the voice of God? While the federal Copyright
Act does not expressly require human authorship of
works subject to its protection, they typically must entail
some element of human creativity. The Ninth Circuit held
as much in a case involving (what else) a work purportedly authored by celestial beings, but nonetheless transcribed, collected, and compiled by mere mortals: “[F]or
a worldly entity to be guilty of infringing a copyright, that
entity must have copied something created by another
worldly entity.” (Urantia Found. v. Maaherra, 114 F.3d
955, 958 (9th Cir. 1997).) And neither of the parties in the
Urantia case disputed that the work at issue was written
by “non-human spiritual beings described in terms such
as the Divine Counselor, the Chief of the Corps of Superuniverse Personalities, and the Chief of the Archangels of
Nebadon.” (114 F.3d at 957.) To paraphrase Bill Murray in
Stripes, we definitely want to party with these guys.
More recently, an Arizona district court was presented
with another complaint filed on behalf of none other than
Jehovah J. God and Jesus J. Christ. The plaintiffs—God
and Christ, of course—alleged that Arizona State University infringed upon God’s copyright by using His “autobiography,” namely, the Bible, without paying royalties
(Jehovah J. God, Jesus J. Christ, William E. Moore and Jehovah Witness Found., Inc. v. Arizona State Univ., 2007 WL
1539324 (D. Ariz.)). The court dismissed the complaint
on its own motion as “both fanciful and factually frivolous” after the plaintiffs filed a motion to proceed in forma
pauperis. After all, the suggestion that the complaining
party lacked sufficient funds to pursue the case belies U2’s
observation that God “isn’t short of cash, mister.” (“Bullet
the Blue Sky” from Rattle and Hum (1988).)
In the same spirit (no pun intended), Penguin Books
sued to protect a religious work that it published called A
Course in Miracles (Penguin Books U.S.A., Inc. v. New
Christian Church of Full Endeavor, Ltd., 2000 WL 1028634
(S.D.N.Y. injunction issued July 25, 2000)). The Course,
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as it became known, is a New Age treatise supposedly dictated to Columbia University faculty members in 1965 by
a voice they identified as that of Jesus, although there was
some dispute as to the precise source. After the Course was
written, the voice determined that “copyright registration
should be sought for the Course, ostensibly in order to
preserve the form of the Course against the possibility of
incomplete or corrupted editions.” The authors “listened
to Jesus and proceeded to contact the [U.S.] Copyright
Office”; the copyright registration they obtained listed
“[Anonymous] (Helen Schucman)” as the author because
“Jesus had cautioned her against publicly associating her
name with it, lest people confuse her role with his and the
Holy Spirit’s.” (2000 WL 1028634 at *4-5.)
Despite the work’s purportedly divine origins, the district court in New York held that A Course in Miracles
could be protected by both copyright and trademark law,
and that Penguin did not commit fraud by publishing a
version of the work since Jesus was not the author of the
work for the purposes of copyright law (2000 WL 1028634
at *15, vacated, 2004 WL 906301, on grounds that the
Course had been published, without notice of copyright,
prior to the date listed on the copyright application). In
doing so, the court found that the Course was an original
work, since it would have been different had it been
“channeled through any other individual.” The ruling
went on to emphasize that “dictation from a non-human
source should not be a bar to copyright.” (2000 WL
1028634 at *12.) There is much more in the full opinion—including the terms parasensory, enneagrams, and of
course, iambic pentameter, since much of the Course was
written in verse—but really, doesn’t this tell you everything you need to know?
THE “DEAD BODY POSE”
Ideas cannot be copyrighted, but there is an ongoing
debate as to whether certain yoga routines may be, even
though yoga has existed for thousands of years. Bikram
Choudhury, founder of Bikram Yoga (a sequence of specific yoga positions and breathing exercises performed at
a room temperature of approximately 100 degrees), is
claimed to be the first to select and arrange the particular
sequence of 26 yoga poses in a book he authored, taken
from poses that themselves had already been in the public
domain for centuries (Open Source Yoga Unity v. Choudhury, 2005 WL 756558 (C.D. Cal.)). A California district
court held even though the individual yoga poses may not
be copyrightable, a “thin” copyright may be obtained for a
specific sequence of them to protect “only the arrangement of [yoga poses] as specifically described in Choudhury’s book.” (2005 WL 756558 at *4.) In doing so, the
court harmonized its holding with the U.S. Supreme
Court’s landmark decision finding that the obvious, alphabetical arrangement of factual information in a telephone
book is not copyrightable—a bit of convenient trivia, since
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to achieve certain of the poses in Bikram Yoga you may
actually need the help of a telephone book to balance
yourself, perhaps during the “Toe Stand” or the aptly
named “Awkward Pose.” (2005 WL 756558 at *2–3; see
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340
(1991).)
WHAT’S IN A NAME?
It is a basic tenet of intellectual property law that you cannot copyright your name. (See Kitchens of Sara Lee, Inc. v.
Nifty Foods Corp., 266 F.2d 541, 544 (2d Cir. 1959).) Take
the case of plaintiff Bob Craft, who legally changed his
name to “Jack Ass” to promote awareness about the dangers of drinking and driving, helped by a cartoon character
he created called Andi Ass and by slogans like “Be a smart
ass, not a dumb ass.” Some years later Mr. Ass (no, we
really didn’t have any choice) then filed a $10 million copyright infringement claim against Viacom International for
the use of his name in association with the MTV reality
series Jackass. The copyright claim was dismissed after Mr.
Ass failed to demonstrate that he had any copyrightable
interest in his name, much less in the use of the word jackass (Ass v. Viacom Int’l, Inc., No. 03-11 (D. Mont. order
issued July 7, 2003)), giving wisdom to the old adage
(okay, the new adage) that calling yourself “Jack Ass” and
being a jackass are not necessarily mutually exclusive.
That same year in an unrelated case, an Illinois criminal
defendant accused of selling marijuana and possessing a
gun claimed that the court had no authority over him in
court proceedings without first paying him compensation
for the use of his name (U.S. v.[Nameless], 328 F.3d 953, 954
(7th Cir. 2003)). In particular, the defendant—who shall
remain nameless in this article—said he belonged to a religious sect that deems its members’ names to be copyrighted.
In keeping with his beliefs, he professed in open court, “You
do not have my authorization for using my copyrighted
name in this courtroom without compensating me. … I am
here to do business. If you want to do business, let’s do
business, or let’s call it off and go home.” (328 F.3d at 958.)
After the defendant was convicted, he proceeded to use
his mailing privileges in prison to send the judge, prosecutor, staff in the clerk’s office, and several potential witnesses copies of a “contract and security agreement”
requiring them to pay $500,000 for each use of his allegedly copyrighted name (he dunned the judge alone for
$151 million). (328 F.3d at 956.) The problem became so
acute that the judge’s clerks began asking not to work on
the case out of fear that the inmate’s bills would somehow
interfere with their ability to obtain mortgages or student
loans. In the end, the Seventh Circuit upheld the man’s
conviction after determining that he had been mentally
sound to stand trial. As Judge Frank H. Easterbrook put it
in his opinion, “[M]any a person with no defense would
rather play games, and try to goad the judge into error,
than face the music politely.” And when it came to the
defendant’s sect that insisted on royalties for use of its
members’ names, the judge wrote: “One person with a
fantastic view may be suspected of delusions; two people
with the identical view are just oddballs.” (328 F.3d at
956.) What he said.
CHARACTER EVIDENCE
Before anyone can obtain a copyright, he or she must first
clear a few minor hurdles, such as depositing copies of the
work with the Copyright Office. (17 U.S.C. §§ 408, 411.)
This requirement proved problematic for James Kodadek,
who sued MTV Networks and Mike Judge, creator of the
animated television series Beavis
and Butthead, for copyright
infringement, claiming that
he (not Judge) had created
the main characters in
1991 (Kodadek v. MTV
Networks, Inc., 152 F.3d
1209, 1210–11 (9th Cir.
1998)). Unfortunately for
Kodadek, he had no original drawings of Beavis or
Butthead from prior to the
show’s first airing in 1993.
Instead, when Kodadek
applied for copyright registration two years after the
show’s debut, he included
reconstructed drawings he supposedly made in 1993 based on his “memory” of drawings
he supposedly created in 1991. Kodadek argued “he was so
familiar with his 1991 drawings that he was able to draw
virtually identical copies of them two years later from
memory.” But the court wouldn’t go for it, noting it had
found in an earlier case with similar circumstances that
“the possibilities for fraud would be limitless.” (Kodadek,
152 F.3d at 1212 (quoting Seiler v. Lucasfilm, Ltd., 808 F.2d
1316, 1322 (9th Cir. 1987)). So Kodadek’s fantastic (or
fantastical) memory notwithstanding, his claims were
dismissed due to the absence of a valid registration,
thereby foreclosing a cognizable infringement claim (152
F.3d at 1212–13). Put differently, rather than “mixing
memory and desire” to quote T. S. Eliot’s “The Waste
Land,” Kodadek would have been better off spending
more time at the U.S. Copyright Office, promptly registering his work.
JOHN FOGERTY V. HIMSELF
Next, any who would contemplate selling off the rights in
their works should make sure they don’t wind up doing
battle with themselves for copyright infringement. In 1970
songwriter John Fogerty, a founding member of Creedence
Clearwater Revival, wrote “Run Through the Jungle.”
Fogerty then sold the rights to the song to a company
called Fantasy in exchange for a percentage of the sales
and other royalties it would bring in. Fifteen years later
when Fogerty published another song, “The Old Man
Down the Road,” Fantasy sued Fogerty for copyright
infringement, claiming that the new song was essentially
the same song he had previously sold to Fantasy, with different lyrics. Fogerty was not immunized against this
result since the rights he had licensed to Fantasy with
“Run Through the Jungle” included the right to create a
derivative work from it (Fantasy, Inc. v. Fogerty, 654 F.
Supp. 1129, 1132 (N.D. Cal. 1987)). And so a jury found
itself faced with the bizarre task of determining whether
one Fogerty song sounded too much like … well …
another Fogerty song. Ultimately, the jury decided that
“The Old Man Down the Road” did not infringe on “Run
Through the Jungle” (see 984 F.2d 1524, 1526 (9th Cir.
1993), and Fogerty eventually was awarded his attorneys
fees for defending his work against, well, his work. (See
Fantasy, Inc. v. Fogerty, 94 F.3d 553 (9th Cir. 1996).) The
lesson to young copyright holders should be clear: caveat
venditor, or “let the seller beware.”
BARNEY CRIES FOWL
The owners of the rights to Barney, the (in)famously optimistic purple dinosaur character, sued a fellow by the
name of Ted Giannoulas for trademark and copyright
infringement after he incorporated a Barney look-alike
into his own routines as a sports mascot called The
Famous Chicken (Lyons P’ship v. Giannoulas, 179 F.3d
384, 385 (5th Cir. 1999)). Specifically, The Famous
Chicken engaged in what the court said could “perhaps
loosely be referred to as ‘performance art,’ ” appearing
alongside a Barney look-alike in an impromptu “danceoff,” in which the dinosaur unexpectedly outdances the
chicken. The chicken would then proceed to “flip, slap,
tackle, trample, and generally assault” the Barney lookalike as part of the act. Though most of the audience no
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plush toys, beds, and other products for dogs bearing labels such
as Chewnel # 5, Dog Perignon,
and Sniffany & Co. (Louis
Vuitton Malletier S.A. v. Haute
Diggity Dog, LLC, 507 F.3d
252, 256 (4th Cir. 2007)). But
the court did not throw Louis
Vuitton any bones (really, how
could we not). The defendant
successfully begged the court
to agree that its use of markings and colors similar to those
copyrighted by Louis Vuitton
was a parody and therefore fair
use, so the designer was forced to
“roll over” on its copyright claims (507
F.3d at 269-270).
doubt found this amusing, there were apparently a number of children present who genuinely believed they were
witnessing an attack on the real Barney. In fact, Barney’s
counsel argued, “only after several days of solace was [one
child] able to relate the horror of what she had observed
in her own words—‘Chicken step on Barney’—without
crying.” In affirming the dismissal of the copyright and
trademark claims on summary judgment, the Fifth Circuit
ruled that The Famous Chicken’s routine was a parody,
and therefore permissible—crying children notwithstanding. (179 F.3d at 386–90.)
BETTER OFF DEAD
A little-used though sound defense to any copyright
infringement claim is that the defendant is deceased (not to
be confused with doing the “Dead Body Pose” in Bikram
yoga, which will only make you look like you are deceased).
Attorneys for the late Gertrude Walton successfully
employed this tactic when BMG, UMG, and Interscope
Records accused her in a lawsuit of illegally sharing more
than 700 copyrighted songs over the Internet under the
screen name “smittenedkitten” (Walton had died at age 83
a month before the complaint was filed). The case was dismissed after the plaintiffs realized too late (yes, pun
intended) that Gertrude Walton was probably not the “smittenedkitten” they were looking for (BMG Music v. Walton,
No. 05-77 (S.D. Va. compliant filed Jan. 27, 2005; notice of
voluntary dismissal filed Feb. 4, 2005)). Perhaps some of
the defendant’s (alleged) downloads—songs like “Angel”
and “The Heavens are Telling,” as listed in an exhibit
attached to the complaint—might have tipped them off.
LAPDOGS OF LUXURY
Louis Vuitton Malletier, the French manufacturer of luxury consumer goods, sued Nevada-based Haute Diggity
Dog for trademark, trade dress, and copyright infringement for its line of Chewy Vuitton products—including
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FO’ SHIZZLE, YOUR HONOR
In England, the holder of a copyright enjoys various
exclusive rights—among them the right not to have the
work subjected to “derogatory treatment,” which includes
“distortion or mutilation” or an act that “is otherwise
prejudicial to the honour or reputation” of the author”
(Confetti Records v. Warner Music UK Ltd., 2003 EWCH
1274, ¶ 148 (Eng. and Wales High Ct., Ch. 2003). These
rights, among others, were at issue in a dispute between a
British rap group known as The Heartless Crew and the
author of a song called “Burnin,” which the group wanted
to remix on a new album. In particular, the songwriter
alleged that his work was subjected to derogatory treatment, given “the overlay of the song with a rap containing
references to violence and drugs.” To assess the merits of
the claims, the court was, of course, required to decipher
The Heartless Crew’s lyrics. “This led to the faintly surreal
experience of three gentlemen in horsehair wigs examining the meaning of such phrases as ‘mish mash man’ and
‘shizzle (or sizzle) my nizzle’,” the court noted (Confetti
Records at ¶¶s 10, 61, 151). Indeed.
The court went on to say that only an expert witness
could interpret the rap lyrics in question, since even
though they were a “form of English,” they are, “for practical purposes, a foreign language.” The court consulted
the Urban Dictionary to interpret such phrases as “fo’
shizzle my nizzle,” which the court understood to mean
“for sure,” although the court was unable to find definitions for the phrases “sizzle my nizzle” or “mish mash
man.” Thus the court concluded that the rap group’s lyrics
did not prejudice the reputation of the author of the track,
and that neither was there prejudice “from the fact that
The Heartless Crew rode the rhythm right through the
track.” (Confetti Records at ¶¶s 154, 155, and 158.)
We’re not sure what that means, but we’re quite “shizzle” that the court got it right. Probably. CL
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