show me how you do that trick: magic performance copyrightable, infringed

Teller v. Dogge, No. 12-cv-00591 (D. Nev. Mar. 20, 2014)

Teller sued Dogge for infringement in two YouTube videos offering to sell the secret to a signature Teller illusion, Shadows.  This illusion

consists of a spotlight trained on a vase containing a single rose. The light falls in such a manner that the shadow of the rose is projected onto a white screen positioned some distance behind it. Teller then enters the otherwise still scene, picks up a large knife, and proceeds to use the knife to dramatically sever the leaves and petals of the rose’s shadow on the screen slowly, one-by-one, whereupon the corresponding leaves of the real rose sitting in the vase fall to the ground, breaking from the stem at the point where Teller cut the shadow. The scene closes with Teller pricking his thumb with the knife, and holding his hand in front of the canvas. A silhouette of a trail of blood appears, trickling down the canvas just below the shadow of Teller’s hand. Teller then wipes his hand across the “blood” shadow, leaving a crimson streak upon the canvas.

Shadows was registered as a dramatic work in 1983. The registration “describes the action of the performance down to its most subtle detail.”  Dogge’s YouTube videos showed a “strikingly similar illusion”:

His videos open with a spotlight trained on a glass bottle containing a single rose. The light falls in such a manner that the rose of the flower is projected onto a white screen positioned some distance behind it. Dogge then enters the otherwise still scene, picks up a large knife, and proceeds to use the knife to dramatically sever the leaves and petals of the rose’s shadow on the screen slowly, one-by-one, whereupon the corresponding leaves of the real rose sitting in the bottle fall to the ground, breaking from the stem at the point where Dogge cut the shadow. After all of the petals are severed from the rose, Dogge removes the stem from the bottle and pours the water from the bottle into a drinking glass.

Dogge’s keywords included Penn and Teller.  His caption stated “I’ve seen the great Penn & Teller performing a similar trick and now I’m very happy to share my version in a different and more impossible way with you.”

Though Teller didn’t register within five years of first publication (the court apparently considered his performances starting in 1976 constituted publication, not a foregone conclusion), the court found that he’d shown that he was the creator and owner of Shadows.

Though magic tricks aren’t copyrightable, dramatic works and pantomimes are; the mere fact that a dramatic work/pantomime centrally features a magic trick doesn’t destroy copyrightability.  (What is the underlying unprotectable “magic trick” that others are free to use?)

Nor did Teller abandon his rights by allegedly failing to take action against other infringers, or challenging others to copy him.  Even if that were a way to waive copyright protection, his partner Penn Jillette’s public statement “No one knows how ‘Shadows’ is done and no one will ever figure it out” “makes no indication that any other individual should publicly perform the work, and only demonstrates confidence that the illusion is so clever that its secret cannot be discovered.”  Copying the secret of the illusion wouldn’t necessarily entail publicly performing the work.

Dogge’s contradictory accounts of whether he copied were of no avail given his YouTube caption.

Substantial similarity: Ideas, concepts, themes and scenes a faire aren’t copyrightable. However, even overlooking their unprotectable elements (not specifically identified), the two works were “nearly identical twins.”  Each begins with a rose sitting on a table—one in an opaque vase, another in a transparent bottle. Each involves the projection of the rose’s shadow onto a screen behind the table.  Each has a lone performer who enters, “observes the rose, then takes hold of a knife sitting on the table and shows it to the audience.”

The performer proceeds to use the knife to cut the shadow of the rose: starting with the branch on the audience’s left, then branch on the right, and finally the flower on top. As the performer cuts the shadow of the rose, the corresponding parts of the real rose fall onto the table.

Teller’s performance ends in blood, while Dogge’s piece ends when he pours the water from the bottle into a glass, but the “events and dramatic progression” are nearly identical. Both had the same “mysterious mood” and a similar pace.  The only differences were “slight differences in props” and the variance in the performer’s actions in the final seconds. These minor differences were “inconsequential” compared to the “significant and subtle similarities.” Thus, they were substantially similar under the extrinsic test, and a reasonable audience would find them to have the same total concept and feel, being based on the “incredibly unique concept of a performer methodically cutting parts of a rose’s shadow, thereby severing the corresponding parts of a real rose.”  (What is the unprotectable magic trick, then? How could it be done without infringing?)  They’d be indistinguishable to an ordinary observer. 

Dogge argued that his method differed from Teller’s, but that’s not the performance perceivable by the audience—substantial similarity involves comparing observable elements.  Even if he used real magic, that would avail him not.

However, the court found material issues on damages.  Teller argued that the infringement was willful because Dogge was informed that he was infringing but didn’t take down one of the videos for seven more days.  Dogge claimed to have responded to the notification by requesting a copy of the copyright registration, and also claimed that the continuing availability was a mistake.  This created a genuine dispute of material fact.

Teller was entitled to attorneys’ fees, because he won; he had a proper motivation (protecting his exclusive rights); and a fee award “advances the public interest in promoting protection of creative works and deterring potential infringers.”

The court denied summary judgment on Teller’s unfair competition claim.  Though Teller submitted evidence that Shadows was his signature trick and widely associated with his celebrity persona, Dogge questioned the reliability of these claims.  “The testimony of Teller’s expert certainly serves as evidence from which a reasonable person could conclude that there is a likelihood of confusion as to Teller’s involvement with Dogge’s videos.” But the relevant question here was not similarity, but whether a reasonable consumer would likely think Teller endorsed the video’s content.  There wasn’t record evidence that any viewer was confused about endorsement, and Dogge’s caption, “I’ve seen the great Penn & Teller performing a similar trick and now I’m very happy to share my version in a different and more impossible way with you,” “potentially clarified that the videos were not supported by Teller.” The court also found it important that Dogge didn’t use an image or likeness of Teller in the video.