Tuesday, March 15, 2016

I don’t go into yours, you don’t go into mine: copyright preempts Dirty Dancing trademark claim

I don’t go into yours, you don’t go into mine: copyright preempts Dirty Dancing trademark claim
Lions Gate Ent. Inc. v. TD Ameritrade Servs. Co., No. cv 15-05024  (C.D. Cal. Mar. 14, 2016)
Lions Gate sued TD for infringing its rights in Dirty Dancing, specifically the well-known line “Nobody puts Baby in a corner,” which Lions Gate claimed as a mark for various goods and services and alleged that it had licensed for “a variety of merchandise.”  TD ran a series of ads, including video, online, and print versions with the theme “Nobody puts your old 401k in a corner,” with an encouragement to enroll in the TD IRA plans. The ads often included images to conjure up Dirty Dancing, such as “a still and/or moving image of a man lifting a piggy bank over his head after the piggy bank ran into the man’s arms.”
Some versions of the ads “invoked” the song, “(I’ve Had) the Time of My Life,” which played during the final dance scene in the movie, with lines like “[b]ecause retirement should be the time of your life.”
Start of TV ad
Middle of TV ad
Big finish of TV ad
After finding specific personal jurisdiction in California, the court turned to Dastar.  For underexplained reasons, the court decided to apply §301 preemption doctrine to see whether the trademark claims were precluded, when it probably ought to be conflict preemption.  (1) Were the claims within the subject matter of copyright? Yes, they were based on the motion picture Dirty Dancing and associated literary/musical works.

(2) Was there an extra element?  This is important because Dastar said that federal trademark law can’t be used to extend copyright or patent rights. “Origin of goods” refers “to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” TD argued that the claims were Dastar-barred, and that, to the extent the elements claimed were famous, they weren’t famous as marks but rather as part of a copyrighted film.
Lions Gate responded that it made separate copyright infringement claims, and that “a single work may be protected as an original work of authorship under copyright law and as a trademark.”

The court found that the complaint bled together its copyright, trademark, and unfair competition claims “making it challenging for the Court, much less Defendants, to determine the allegedly separate theories underlying the different rights.”  Lions Gate was using copyright “either as a bolster for its trademark and unfair competition claims, or as the real basis of the claims — the latter of which is certainly not permissible.”  It was even unclear what NOBODY PUTS BABY IN A CORNER was used for—Lions Gate said at oral argument that it was on goods such as posters, journals, and clothing (which sound awfully ornamental/expressive to me). 
The court found the claim barred by Dastar.  Unfair competition and trademark infringement claims also failed as preempted.  “These causes of action are based on Defendants essentially copying Plaintiff’s intellectual property and slightly changing the words — creating a derivative work, perhaps — and using the changed sentence in advertising its own products.”  (A little worrisome that a sentence fragment might be enough for copyright infringement, but I hope substantial similarity analysis will ultimately be sensible.  The fact that there might be a gap between copyright and trademark rights isn’t a problem; it’s a function of the system!)  State and common-law claims were also preempted by copyright law “because the same rights are asserted in these causes of action as are asserted in the copyright infringement cause of action, namely reproduction and distribution of the copyrighted work and preparation of a derivative work.”
The court distinguished Dastar-barred claims from acceptable passing off claims:
[I]f the TD Defendants were to sell posters, journals, and clothing with NOBODY PUTS BABY IN A CORNER on them, or take the goods Lions Gate alleges it produces or licenses and put TD’s own mark on it, then there would be a solid origin claim under the Lanham Act, and surely any state and common-law equivalent. Dastar explicitly provided for that — the distinction it drew for origin claims was between “the producer of the tangible goods that are offered for sale” (allowable) and “the author of any idea, concept, or communication embodied in those goods” (preempted). The problem is that nothing like that has occurred here.
Instead, Lions Gate argued that TD’s use of “a slightly altered version” of its marks would cause consumer confusion as to Lions Gate’s endorsement or association with those services, “even though the advertisements clearly promote TD’s financial services and do not mention Lions Gate or Dirty Dancing, or attempt to pass off products of TD as from Lions Gate or vice versa.”  Lions Gate argued that this confusion flowed from the use of NOBODY PUTS BABY IN A CORNER, but the court couldn’t see how that differed from a copyright infringement claim, “or a claim that Defendants have failed to obtain the permission of the author of the ‘idea, concept, or communication embodied in those goods.’”  TD made a new tag line, “Nobody puts your old 401k in a corner”; it “played on the famous concluding dance scene”; and it “referenced” the famous song playing during that dance with another tag line, “Because retirement should be the time of your life.” That might be copyright infringement, but not trademark infringement.
A communicative good can be protected under both copyright and trademark, but not here.  The alleged wrongful conduct is just unauthorized use of the protected elements of Dirty Dancing; though Lions Gate added the allegation that consumers would be confused about association, the right alleged was exactly the same: “the right to be the exclusive licensor and user of the sentence ‘Nobody puts Baby in a corner.’”
The court then discussed Lions Gate’s strongest cases, Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007), and Butler v. Target Corp., 323 F. Supp. 2d 1052 (C.D. Cal. 2004). Bach involved the defendants’ use of the title, character, name, text, and photographs from the book Jonathan Livingston Seagull. “The defendants not only used the intellectual property associated with the book in their own materials, but they also stated in advertising their products that the brand ‘is the Jonathan brand’ and that ‘Jonathan is really the basis of what Forever is about.’” The court found that the name, title, and trade dress of the book cover were protected under trademark, not copyright, because those were source-identifying marks.  By contrast, NOBODY PUTS BABY IN A CORNER was part of the text of the copyrighted work Dirty Dancing, especially given that Lions Gate relied on other elements from the film to bolster its claim.
Butler involved the defendant’s use of plaintiffs’ copyrighted musical work and sound recording, Rebirth of Slick (Cool like Dat). The defendant played the sound recording as the soundtrack to its national advertising campaign, and also had ads and signs at stores stating, “Jeans Like That,” “Denim Like That,” “Shoes Like That,” and so on. The plaintiffs sued for infringement of the right to publicity, unfair business practices, and Lanham Act claims. The court found claims based on the use of the sound recording to be preempted, but not right of publicity/unfair business practices based on the use of the plaintiffs’ identity/false endorsement claims. Butler never mentioned Dastar; the plaintiffs weren’t claiming solely that a modified use of a famous line violated their trademark rights.  Instead, they claimed that “the use of something so closely associated to their famous persona was a misappropriation of their publicity and a false endorsement where the ‘mark’ for Lanham Act purposes is their celebrity identity.”  This wasn’t similar to Lions Gate’s theory, and it wasn’t necessarily covered by Dastar.  (Ugh.  See also: why we need the Supreme Court to fix the right of publicity.)
Dilution claims led to a beautiful ruling on “use as a mark,” even in the possible absence of preemption:
Plaintiff claims that Defendants have used the mark in Defendants’ ads, but that is not the same as alleging that Defendants use Plaintiff’s mark, or a mark nearly identical to it, as the mark for Defendants’ own goods — which would be an allegation that appears clearly contradicted by the facts of this case. Thus, it does not appear that as pled, Defendants have used the mark in commerce in the sense that the law requires. There does not appear to be any dispute or contrary facts that Plaintiff could plead to show that Defendants used the allegedly famous mark as Defendants’ own mark or to identify Defendants’ services.
Last comment: The best way to understand this result may be plaintiffs are actually attempting to use the whole film as the trademark/the film as a trademark for itself, which is what a pure licensing model means in this context, and that can’t work without conflicting with Dastar.

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