Time for the 12 O'Clock Boyz to go: court shuts down (c)/TM lawsuit against documentary & feature film about Baltimore bikers

Monbo v. Nathan, --- F.Supp.3d ----, 2022 WL 4591905, No. 18-CV-5930 (MKB) (E.D.N.Y. Aug. 26, 2022)

Late, but just showed up in my Westclip! Plaintiffs alleged that defendants’ 2013 documentary about an aspiring dirt-bike rider in Baltimore, titled “12 O’Clock Boys” and upcoming feature film based on it infringe their copyrights on their 2001 documentaries “12 O’Clock Boyz” and 2003 sequel “12 O’Clock Boyz: The Paparazzi Edition,” featuring the 12 O’Clock Boyz urban dirt-bike stunt group. Plaintiffs also alleged infringement of Monbo’s right of publicity, unjust enrichment, and violations of the Lanham Act and related Maryland trademark law. The court, in a careful opinion, rejected all the claims.

From PR newswire, apparently a still from the 2001 film

registered trademark

For the 2001 Documentary, Monbo “organize[d] a group of highly skilled dirt-bike riders” to participate in a scripted film “that would highlight the exploits of an ostentatious group of dirt-bike riders in Baltimore called 12 O’Clock Boyz.” Monbo allegedly coined the phrase 12 O’Clock Boyz “to describe the way in which riders would elevate the front of their bikes and ride only on the back wheels until their bikes would be perpendicular to the road or in the ‘12 O’Clock’ position.” The 2001 Documentary “sold 50,000 copies in two weeks and revolutionized the Baltimore dirt-bike culture,” inspiring a sequel and plans to make a third film. Plaintiffs allegedly used the 12 O’Clock Boyz trademarks since 2001 and registered the marks in 2016.

Nathan directed the allegedly infringing 2013 Documentary, which “tells the story of Pug, a thirteen-year-old child who wants to be a ‘12 O’Clock Boy,’ just like [he] has repeatedly watched in [the 2001 and 2003 Documentaries].” Plaintiffs claimed infringement, including “the character Pug, clips, the title card, concepts, feel, mood, theme, and approach.”

Defendants' 2013 documentary

Both parties’ works are “docu-fiction” set in Baltimore. Both the 2001 and 2013 movies begin with a news clip used “[t]o give [the] feel of a documentary”: the 2001 Documentary with “actual news footage from a Baltimore TV News segment” and the 2013 Documentary with the voice of “a real radio host.” Both include interviews with people sitting on the front steps of a house; transitions from riding scenes to interview scenes; a clip of the 12 O’Clock Boyz riding down the street, slow-motion shots of the riders; film of the riders from a moving vehicle; and the 12 O’Clock Boyz themselves. Both incorporate the theme of death: the 2001 Documentary pays respect to a rider, “Buck,” who passed away during filming, and the 2013 Documentary discusses Pug’s brother, Tibba, who passed away during filming of that work. In addition, a character called “Pug” appeared with his hat turned backwards in the 2001 Documentary and in the 2013 Documentary. Monbo choreographed scenes of the 12 O’Clock Boyz riding in formation that are similar to a scene used on the DVD cover of the 2013 Documentary.

In addition, seventeen minutes into the 2013 Documentary, the title card from their 2001 film appears, followed by “upward of thirty” excerpts from Plaintiffs’ films taken without permission. Monbo appeared as an actor in the 2001 and 2003 Documentaries, was interviewed in “[a]t least two” of the segments defendants used, and was not compensated for the use of his likeness. Defendants allegedly used editing tools to compress scenes that constituted “about 70% or more of” the 2001 Documentary into minutes of footage that then appeared in the 2013 Documentary.

In addition, the design of the title of the 2013 Documentary was allegedly similar to plaintiffs’ registered 12 O’Clock Boyz logo. Defendants also used 12oclockboys.com to promote and sell the 2013 Documentary, leading to the trademark infringement claims.

While the feature film apparently would not use the title 12 O’Clock Boys, plaintiffs still objected because the feature film makers allegedly filmed a script in Baltimore with the following plot:

Mouse wants nothing more than to be a part of the Midnight Clique, a tough group of Baltimore bike riders, who rule the summertime streets. As he navigates the challenges of coming of age in a complicated world, he learns the hard way that the choices you make early on can change your life forever.

Pug in the 2013 Documentary, like Mouse in the feature film, wants to be a veterinarian but also wants to join a group of dirt-bike riders; both feature skilled dirt-bike riders; and both are set in Baltimore. The feature film defendants allegedly infringed on plaintiffs’ mark by using “12 O’Clock Boyz” as a working title on IMDB and used “Twelve,” a “colorable imitation of Plaintiffs’ registered 12 O’Clock Boyz mark,” to promote their film.

While the court went through the works in detail, to give you a sense of the level of generality at which the copyright arguments are pitched, I’ll just share one comparison: The 2001 documentary begins, after the title screen, with a shot of a man riding a four-wheeler down a city street, front wheels in the air. A newscaster’s voice plays over the scene, stating “it’s the stunt every four-wheeler rider wants to master.” By contrast, the 2013 Documentary begins with footage of Pug in a van at night. A male radio host narrates, harshly criticizing “these little scumbags on these dirt bikes in our downtown.”

The court found the claims of direct, contributory, and vicarious copyright infringement time-barred because plaintiffs didn’t submit evidence of continuing infringement by the moving defendants within 3 years of the filing of the complaint. But also, the documentaries weren’t substantially similar, and, “even if the 2013 Documentary is substantially similar to the 2001 Documentary under the fragmented literal similarity test due its use of clips from the 2001 Documentary, Plaintiffs’ claim with respect to this documentary is barred by the fair use doctrine.”

The similarities in setting, theme, etc. were unprotectable elements, including “a local boy’s dream” to become part of the Twelve O’Clock Boyz.  “[I]t is a fact in the public domain that the 12 O’Clock Boyz are from Baltimore and ride in these specific locations,” as was “the presence of dirt-bike riders in the neighborhoods where they ride in real life” and “a scene of them riding in a group, as they do regularly.”

The dirt-bike riders in the 2001 Documentary, including Pug, were “stock characters” and not protectable elements. “The concept of skilled riders who perform daring stunts is not novel, and this basic character type flows from the theme of a work about dirt-bike riding. In addition, the characters are not developed beyond these attributes.” 2013 Pug “shares no similarities” with 2001 Pug “other than having the same name and wearing a backwards baseball cap. However, the fact that these characters share the same name does not by itself make them substantially similar.” And wearing a backwards hat is a “generic and generalized character trait[ ]” that is not protectable. But, limiting the force of these statements, the court continued that it was more significant that 2001 Pug was introduced as an adult with no exploration of how he joined, whereas 2013 Pug was the main character and protagonist “who faces conflict between the desire to join a group of dirt-bike riders and his aspiration to become a veterinarian, and the viewer sees Pug grow up over the course of several years, as his ambition remains constant and his riding skills develop.” They had a different “total concept and feel.”

The various shared filming techniques (starting with a news clip, filming in slo-mo and from a moving vehicle, transitioning between riding scenes and interview scenes, etc.) were likewise unprotectable as standard in the genre. “Plaintiffs do not have the exclusive right to make docu-fiction about dirt-bike riders, as methods of story-telling are not protectable.” Also, use of a single 2001 clip in which the 12 O’Clock Boyz are depicted riding down the street was not “qualitatively or quantitatively significant to the 2001 Documentary, and is therefore a de minimis similarity that does not, on its own, give rise to a finding of substantial similarity between the works.” Also, paying respect to someone who passed away during filming was “too general to be protectable,” and, as with other elements, there were “no similarities in the works’ treatment of this theme — the 2001 Documentary acknowledges Buck’s passing in a simple overlay at the end of the film, while the 2013 Documentary incorporates Tibba’s death as part of its plot and explores its impact on Pug.”

Ultimately, the 2001 Documentary was “an approximately half-hour-long series of loosely connected clips of 12 O’Clock Boyz riders displaying their riding prowess,” while the 2013 Documentary, nearly twice as long, was “a narrative work with a different tone, characters who are developed and whose relationships are explored, and a clearer and more complex plot that follows Pug across several years as he faces challenges and pursues his goal to become a rider.” This gave them a different “total concept and feel.” So too with plaintiffs’ 2003 Documentary.

What about fragmented literal similarity based on use of clips from the 2001 Documentary (no clips from the 2003 Documentary were allegedly used)? Even accepting that substantial similarity was present (qualitative significance would be a fact question), fair use protected the uses.

The uses comprised eighty-seven seconds of the 2001 Documentary (3.7%), edited into seventy-five seconds—“a selection of stunts and two short interview segments.”

Defendants argued that the clips “were included to enable viewers ... to understand the impact of the legends appearing in the 2001 [Documentary] on Pug’s desire to mimic their feats, join the 12 O’Clock Boyz and to recapture Pug’s treasured memory of watching it with his brother, Tibba.”

The use was transformative because it put the clips into a new context: “a locally popular tape that had inspired Pug to start dirt-bike riding [with] personal significance to Pug because he had watched it, along with the 2003 Documentary, many times with Tibba.” Commerciality wasn’t a significant weight against this transformativeness.

Factor two was of little weight, especially since defendants reproduced the excerpts “to illustrate their effect on Pug, rather than because the stunts captured in the 2001 Documentary add creative value to the 2013 Documentary.” The original filmography in the 2013 Documentary “captures many similar stunts, at greater length, in higher-definition film.” Plus, the 2001 Documentary was already published.

Factor three: Except for about 12 seconds showing the 12 O’Clock Boyz title, every other excerpt was 2-4 seconds of longer stunt or interview segments, which was reasonable in light of the transformative purpose. The amount taken was “quantitatively small,” and could not substitute for the 2001 Documentary.

Factor four: Plaintiffs didn’t argue that they lost licensing fees; instead, they argued that they were losing purchases of their documentaries because the 2013 Documentary implied that the parties were associated. But the 2013 Documentary was not a market substitute, because it was transformative of a small portion of the 2001 Documentary. “[I]t is unlikely that potential purchasers of the 2001 Documentary would opt to acquire the 2013 Documentary in order to see the seventy-five seconds of clips from the 2001 Documentary in preference to the original.”

Right of publicity and unjust enrichment claims were preempted. (I’m not sure, but this might well be the most explicit statement there is that uses protected by fair use against infringement are also protected by preemption against ROP claims, where the claimant consented to be in the original.)

Preemption is less favored for right of publicity claims that “vindicate substantial state law interests,” such as those regulating false endorsements or otherwise protecting consumers. Where there is no such interest, and where a right of publicity suit, “although ostensibly an invocation of [a plaintiff’s] rights to control the use of his persona in publicity, is so devoid of the substantial interests protected by that right” that it is best described as a “thinly disguised” copyright claim, such a suit is impliedly preempted.

Monbo’s right of publicity claim was both expressly and impliedly preempted because it focused on use of his image in works covered by plaintiffs’ copyright claim. There was no false endorsement concern. “In the context of the film, it is unambiguous that he is depicted in an excerpt from the 2001 Documentary.” The excerpts were neither derogatory nor an invasion of Monbo’s privacy, and this use of a right of publicity suit “could substantially interfere with the utilization of a work in ways explicitly permitted by the Copyright Act, such as for uses that would qualify as fair use under 17 U.S.C. § 107.” Thus, this claim “does not seek to vindicate any substantial state interests distinct from those furthered by the copyright law” and was preempted by the Copyright Act.

So too with unjust enrichment, which was based on defendants’ copying. The Second Circuit has held that “[w]hile enrichment is not required for copyright infringement,” it does “not ... go[ ] far enough to make the unjust enrichment claim qualitatively different from a copyright infringement claim.”

Trademark etc. claims: Claims for infringement of a registered mark were untimely because they accrued before registration occurred. Lanham Act claims based on common-law rights were barred by laches. The court applied the analogous Maryland statute of limitations (three years); plaintiffs sent a threat letter in late 2014 and didn’t sue for over four years, giving rise to a presumption of laches (and time-barring the state law trademark claims). Plaintiffs offered no evidence in response, but, in light of their pro se status and the equitable nature of laches, the court also considered the merits.

The claims were based on defendants’ use of the phrase “12 O’Clock Boys” as the title for the 2013 Documentary and use of the 2001 Documentary’s title card in the 2013 Documentary, as well as twelveoclockboys.com.

Title of documentary: Rogers barred the claim, though the court made the now-usual mistake of saying that explicit misleadingness is determined by applying the Polaroid factors, which if taken seriously would mean there was no separate Rogers test at all. (For those not totally immersed in Rogers cases, the language about applying the Polaroid factors in a First Amendment-protective way comes from title-v-title cases, which Rogers itself excluded from its scope, and makes sense in that context—meaning that the court here uses the right test for the wrong reason.)

There was no explicit misleadingness here as to source or content. Before registration, the phrase “appears to have been descriptive and thus not particularly strong,” given Monbo’s argument that it was “a phrase coined by [Monbo] to describe the way in which riders would elevate the front of their bikes and ride only on the back wheels until their bikes would be perpendicular to the road or in the ‘12 O’Clock’ position.” Similarity of marks and proximity of goods favored Monbo, and bridging the gap was irrelevant. But there was no evidence of actual consumer confusion, despite the presence of both on the marketplace since 2013. And bad faith wasn’t present; when plaintiffs alleged infringement, defendants responded that they’d done an extensive trademark search and found no conflicts. Also, the 2013 Documentary was “a higher quality production,” making potential confusion less harmful. [OK, the court says less likely, but this factor, to the extent it has any reason to exist, is really about risk tolerance.] And the relevant consumer group was “assumed to be relatively unsophisticated because the item at issue, a film, is inexpensive and marketed to the general class of consumers rather than to experts.”

Under Polaroid via title-v-title cases, this didn’t add up to a “particularly compelling” likelihood of confusion. Also, “even if a significant number of consumers would not pay attention to the end credits of the 2013 Documentary, the end credits, as well as the promotional materials for the 2013 Documentary attached to the Amended Complaint as exhibits, clearly indicate that the producers of the 2013 Documentary are not the individuals who produced Plaintiffs’ films.”

Also, to the extent that the claims were based on failure to credit plaintiffs for the use of clips, those were Dastar-barred.

Use of the title card from plaintiffs’ documentary in the film’s content was nominative fair use. In the Second Circuit, this is assessed by using the Polaroid factors plus the Third Circuit’s NFU factors ((1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder). Since those are largely normative inquiries, they fit poorly with the majority of the Polaroid factors, which are framed in empirical terms, and—as the court here does—the only way to balance them is intuitively.

Here, the 2013 Documentary showed the title card of the 2001 Documentary containing the mark at the beginning of the excerpts from the 2001 Documentary. “They use the card to identify the film that Pug is watching, and they accompany that segment of the video with Pug’s narration that he used to watch the film with Tibba.” Nothing about that implied endorsement, “and, considered in the context of the 2013 Documentary having its own title and credits in a distinct font, the use does not confuse viewers as to the origin of the 2013 Documentary.”

Dilution: Failed for want of federal fame.

ACPA: The domain name was registered before plaintiffs registered their mark. The phrase was descriptive, and there was no evidence of acquired distinctiveness beyond plaintiffs’ use of the mark since 2001 and the existence of a 2003 article in a Baltimore newspaper describing the 12 O’Clock Boys and noting their documentaries. Thus the cybersquatting claim failed.

The court also dismissed claims against other defendants only involved with the feature film, which didn’t use the 12 O’Clock Boys name or have more than glancing similarities with plaintiffs’ documentaries. “[T]o the extent the plot of Plaintiffs’ works can be understood as one of inspiring young riders to join the 12 O’Clock Boyz, this is a general plot idea that is not protectable beyond the manner in which it is expressed, and, in any event, the Feature Film’s concept of a young boy who wants to join a dirt-bike group does not appear in Plaintiffs’ works — it only appears in the 2013 Documentary.”

As for trademark claims, stray references to “12 O’Clock Boys” or “Twelve” as a potential title of the film (ultimately titled “Charm City Kings”) were insufficient. “Twelve” was insufficient because there was no allegation plaintiffs had a valid trademark in that world. Nor was use on Wikipedia, IMDB, or advertising of “12 O’Clock Boys” as a potential title on Wikipedia, IMDB, or in advertising for the film enough given Rogers. “[T]he relevant population of consumers of the Feature Film — filmgoers — are not likely to confuse the source of the Feature Film and Plaintiffs’ documentaries, particularly given that both include explicit source designations.”