Creative Protection

'Christmas Story' Actor Drops Lawsuit Against Warner Bros.

The Farkus bully in the movie sued over figurines that allegedly showed his face.

by Eriq Gardner

Christmas has come and gone, and so too has the lawsuit against Warner Bros. by the actor who played Scut Farkus in A Christmas Story.

In August, Zack Ward sued the studio, claiming that his likeness was misappropriated in the sale of figurines. This past week, the parties found a way to start the new year in peace. According to court documents, the lawsuit has been dismissed by the mutual consent of the parties.

Ward was 12 years old when he played Farkus, best remembered as the bully who threw snowballs and then got his comeuppance.

Unlike the other actors in the film, Farkus said he was the only one whose contract didn't contain a rider that allowed the production company to use the actor's likeness in consumer merchandise.

This became troubling to Ward when he found out about a set of figurines featuring some of the characters in poses from the film. The Farkus character was, of course, throwing a snowball.

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Jules Jordan Video, Inc. v. 144942 Canada Inc.

Ashley Gasper is an adult movie actor who performs under the stage name Jules Jordan, and is the president and sole shareholder of Jules Jordan Video (“JJV”), the creator of the videos in which Gasper appears. He and his company sued defendants 144942 Canada, Inc., d/b/a Kaytel Video Distribution (“Kaytel”), Leisure Time Video Canada, Inc. (“Leisure Time”), Alain Elmaleh, the principal shareholder of each of the corporate defendants (collectively the “Kaytel defendants”), Jacky’s One Stop and the other defendants named in this consolidated appeal. Gasper alleged that the Kaytel defendants had copied and sold thirteen copyrighted adult DVDs owned by JJV or Gasper and featuring Gasper’s performances (the “JJV action”). The complaint alleged claims for copyright infringement, contributory copyright infringement, violation of unfair business practice, unfair competition under California law, false and misleading advertising, and violation of Gasper’s right of publicity. The claims for unfair business practices and false advertising were dismissed prior to trial, leaving only the claims for copyright infringement based on the replication and distribution of the thirteen DVDs, and the claim for violation of Gasper’s right of publicity under California law.

After a lengthy and contentious trial, the jury returned a verdict for plaintiffs on both issues. After the verdict the court granted the Kaytel defendants’ motion for judgment as a matter of law (“JMOL”) in part, concluding that neither Gasper nor JJV had standing to assert the copyright claims, and denied plaintiffs’ motion for JMOL. The court rejected the Kaytel defendants’ claim that Gasper’s right of publicity claim was preempted by copyright law. Both parties have appealed. We disagree with the district court on both issues, concluding that Gasper’s right of publicity claim is preempted by the Copyright Act, but that Gasper and JJV had standing to assert the copyright claims in question.

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PARIS HILTON V. HALLMARK CARDS

We must decide whether California law allows a celebrity to sue a greeting card company for using her image and catchphrase in a birthday card without her permission.

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Christoff v. Nestle

In 1986, professional model Russell Christoff was paid $250 to pose for a photograph to be used in Canada on a label for bricks of coffee. Sixteen years later, Christoff saw his face on a jar of Taster‟s Choice instant coffee in the United States and discovered that his image had been used without his consent on millions of labels sold internationally for the preceding five years. Christoff filed the present action for appropriation of his likeness six years after Nestlé USA, Inc. (Nestlé), began using his image on the Taster‟s Choice label but less than a year after his discovery.

The trial court applied a two-year statute of limitations and instructed the jury to determine under the discovery rule whether Christoff knew or should have known earlier that Nestlé had used his image. The jury found that Christoff did not know, and should not reasonably have suspected prior to seeing the jar, that his image was being used without his consent and awarded him more than $15 million in damages.

The Court of Appeal reversed, holding that under the single-publication rule, because Christoff had not filed his lawsuit within two years after Nestlé first “published” the label, his cause of action is barred by the statute of limitations unless, on remand, the trier of fact finds that Nestlé had hindered Christoff‟s discovery of the use of his photograph, or that the label had been “republished.” We granted review.

We agree with the Court of Appeal that the judgment must be reversed because the trial court erroneously ruled that the single-publication rule does not apply to claims for appropriation of likeness. But we do not agree with the Court of Appeal that this means that Christoff‟s action necessarily is barred by the statute of limitations unless he can show on remand that Nestlé had hindered his discovery of the use of his photograph, or that the label had been “republished.” The Court of Appeal‟s ruling presupposes that Nestlé‟s various uses of Christoff‟s likeness, including its production of the product label for a five-year period, necessarily constituted a “single publication” within the meaning of the single-publication rule. Because the parties were prevented by the trial court‟s erroneous legal ruling from developing a record concerning whether the single-publication rule applied, we remand the matter for further proceedings.

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Facenda v. NFL Films

We must resolve this clash between parties claiming different types of intellectual property. Although we agree with much of the Court’s trademark analysis, for the reasons that follow we vacate the Court’s grant of summary judgment for the Estate and remand for trial on the Lanham Act claim. We affirm, however, the District Court’s grant of summary judgment to the Estate on the Pennsylvania right-of-publicity claim.

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C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P.

C.B.C. Distribution and Marketing, Inc., brought this action for a declaratory judgment against Major League Baseball Advanced Media, L.P., to establish its right to use, without license, the names of and information about major league baseball players in connection with its fantasy baseball products. Advanced Media counterclaimed, maintaining that CBC's fantasy baseball products violated rights of publicity belonging to major league baseball players and that the players, through their association, had licensed those rights to Advanced Media, the interactive media and Internet company of major league baseball. The Major League Baseball Players Association intervened in the suit, joining in Advanced Media's claims and further asserting a breach of contract claim against CBC. The district court granted summary judgment to CBC, see C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E.D. Mo. 2006), and Advanced Media and the Players Association appealed. We affirm.

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Copyright isn't the last word when privacy rights infringed

MIND YOUR BUSINESS
Copyright isn't the last word when privacy rights infringed
Ilana DeBare
Wednesday, December 6, 2006

Q: I am a photographer who was given permission to take photos at a music club. I've taken a number of pictures of rock stars and other musicians performing there. Do I own the rights to these photographs or do the rights belong to the subjects of my photos? And if I own the rights, can I copyright the pictures and sell them to the public?

-- S.F. shutterbug

A:There are actually two separate issues here -- whether you own a copyright to these photos, and whether you have a right to make money off of them.

Let's start with copyright. As the creator of these photos, you automatically have a copyright even if you haven't registered your work with the U.S. Copyright Office.

So no one is legally allowed to copy or use those photos without your permission.

Now for your ability to make money from photos of, say, Mick Jagger in concert. There you run into restrictions because of state privacy laws, according to Owen Seitel, an intellectual property lawyer with Idell, Berman & Seitel in San Francisco.

California and many other states have laws giving individuals the right to control the commercial use of their images or names.

Full story.

Almeida v. Amazon.com, Inc.

Thais Cardoso Almeida brought this action against Amazon.com, Inc. (“Amazon”) for displaying her image on its websites in furtherance of its sale of the book Anjos Proibidos. Almeida asserted claims against Amazon pursuant to Fla. Stat. § 540.08 (West 2006), for civil theft pursuant to Fla. Stat. § 772.11 (West 2006), and under Florida’s common law doctrine of invasion of privacy. The district court granted summary judgment in favor of Amazon as to all of Almeida’s claims. The district court held that Almeida’s right of publicity claim under § 540.08 and common law is preempted by the Communications Decency Act of 1996 (“CDA”), 47 U.S.C. § 230 (2000), and is otherwise unavailable under Florida’s statutory first-sale doctrine. As to Almeida’s civil theft claim, the district court held that Almeida failed to establish Amazon’s intent to misappropriate Almeida’s image. We affirm the district court’s grant of summary judgment, although with respect to Almeida’s right of publicity claim, we do so on different grounds.

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Miller v. Glenn Miller Prods., Inc.

PER CURIAM:
[1] Steven and Jonnie Miller, adopted children of Helen Miller, wife of the world-renowned bandleader Glenn Miller, and their exclusive licensing agent CMG Worldwide Inc. (collectively “Appellants”) appeal from the district court’s order granting defendant Glenn Miller Productions, Inc. (“GMP”) summary judgment and dismissing their complaint on the basis of laches. See Miller v. Glenn Miller Prods., 318 F. Supp. 2d 923 (C.D. Cal. 2004). GMP cross-appeals the district court’s determination that it is engaged in unauthorized sublicensing. In his well-reasoned opinion, District Judge A.Howard Matz ruled that a licensee of trademark and related publicity rights may not sublicense those rights to third parties without express permission from the original licensor. Id. at 939. We agree with this extension of the well-established “sublicensing rule” from copyright and patent law to the licensing of trademark and related publicity rights such as occurred here, and with the district court’s reasons for extending the rule. The district court also correctly ruled, however, that Appellants are barred by the doctrine of laches from taking legal action now, based on undisputed evidence establishing that they should have known of GMP’s allegedly infringing activities well beyond the statutory period for bringing suit. Id. at 944-45. Accordingly, we affirm and adopt the district court’s thorough opinion with the exception of Section C.5 (id. at 945-46) and the final three sentences of the opinion (id. at 946, beginning with “Alternatively, the Court rules”). We also reprint the incorporated portions as an appendix to this opinion.

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Laws v. Sony Music Entm't

BYBEE, Circuit Judge:
Plaintiff Debra Laws (“Laws”) brought suit against defendant Sony Music Entertainment, Inc. (“Sony”) for misappropriating her voice and name in the song “All I Have” by Jennifer Lopez and L.L. Cool J. The district court found that Sony had obtained a license to use a sample of Laws’s recording of “Very Special” and held that Laws’s claims for violation of her common law right to privacy and her statutory right of publicity were preempted by the Copyright Act, 17 U.S.C. § 101-1332. We agree with the district court that the Copyright Act preempts Laws’s claims, and we affirm.

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