Legal Blog

Law 360: Supreme Court Will Hear ‘Scandalous’ Trademark Case

Law 360 reports that “less than two years after ruling that a federal ban on racist trademark registrations violated the First Amendment, the U.S. Supreme Court agreed Friday to hear a case that will decide whether a similar rule banning “scandalous” material is also unconstitutional.”

Catch up on this issue with our coverage of the 2017 “Slants” decision here: Band Not Banned: High Court Finds Unconstitutional Trademark Office’s Basis for Refusal to Register THE SLANTS Trademark

Dance Dance Litigation: Actor Alfonso Ribeiro Moves to Take The Game Out of “The Carlton”

Earlier this week, actor Alfonso Ribeiro filed a claim for copyright infringement, violation of the right of publicity, and unfair competition against Epic Games, Inc. over its use of the dance move commonly known as “The Carlton” (the “Dance Move”) in the popular video game Fortnite: Battle Royale (“Fortnite”).  Ribeiro also filed a similar claim against Take-Two Interactive Software Inc. and certain of its subsidiaries over the use of the Dance Move in the NBA 2K video game series (“NBA 2K”). 

To date, both Fortnite and NBA 2K have generated millions of dollars in revenue via in-game purchases, including character avatar dance moves known as “emotes”.  These emotes have also taken on their own significance in current pop culture, with millions of teens all over the world posting videos of themselves copying the dance moves of their video game avatars on YouTube and other social media sites, often under hashtags referencing the video games (e.g., #fortnitedance or #fortnitevideos), rather than the dance move creators.  The Dance Move, which was first popularized by Ribeiro in an early 90s episode of the TV sitcom “The Fresh Prince of Bel-Air,” was included in Fortnite and NBA 2K as purchasable in-game emotes named the “Fresh” and “So Fresh”, respectively.  The Dance Move was also featured in promotional materials for the games.  None of these uses of the Dance Move gave attribution to Ribeiro or had Ribeiro’s prior permission, which Ribeiro argues was necessary.  Ribeiro’s complaint seeks injunctive relief to prevent the further inclusion and sale of the Dance Move in the games and use in promotional materials, as well as damages, including profits purportedly attributed to the misappropriation and improper use of the Dance Move and Ribeiro’s likeness.        

In the complaints, Ribeiro argues that despite first being aired more than twenty years ago, the Dance Move remains “distinctive, immediately recognizable, and inextricably linked to Ribeiro’s identity, celebrity, and likeness” and that accordingly, “the Dance [Move] has become synonymous with Ribeiro…..[and] is a part of Ribeiro’s identity.”  The complaints also note that Ribeiro filed an initial application with the United States Copyright Office on December 15, 2018 to obtain a copyright registration for the Dance Move.  Ribeiro’s complaint further alleges that the emotes constitute unlawful digital copies and derivative works of the Dance Move as well as a misappropriation of Ribeiro’s identity, and that the way the Dance Move is used creates the false implication that Ribeiro consented to the use of his likeness and endorsed the games.  Additionally, Ribeiro accuses the defendants of intentionally inducing the players of the games to perform and mark the Dance Move with hashtags referencing the games, and argues that this creates an erroneous public association between the Dance Move and the emote within the game.

Ribeiro’s claims are representative of growing pushback over the way in which the video game industry earns revenue and follows on similar claims brought by rapper 2 Milly and Russell Horning a/k/a the “Backpack Kid” over in-game uses of their respective signature dance moves, the “Milly Rock” and the “Floss.”  Many prominent musicians, including Chance the Rapper, have also grown vocal about their dislike of the exploitation of signature dance moves, noting that the songs behind the dance moves should also be included in the games so that the musicians and creatives that inspired the dances can also benefit from the revenues being generated.

If successful, the lawsuits brought by Ribeiro, 2 Milly, and Horning could significantly impact the types of micro-transactions and other in-game purchases that have become the largest revenue source and profit driver for most video game companies, particularly in light of the fact that many of the most popular video games out today, including Fortnite, are otherwise free to play.  A successful claim could also spark a wave of other celebrities and YouTube stars filing claims of their own, which could drastically impact the current profitability levels of the major video game companies. However, Ribeiro’s claims are certainly not a slam dunk.  First, the law is not clear as to whether an individual dance move, as opposed to an elaborate choreography, is actually copyrightable and so this issue is likely to play a large part in determining the outcome of the case.  Another potential setback that Ribeiro may face is the fact that in several public interviews in the past, he has openly stated that the Dance Move was “inspired by” both Courtney Cox’s dance in Bruce Springsteen’s Born to Run video, as well as Eddie Murphy’s “White People Dance”.  That the Dance Move may have been influenced by a prior dance or choreography does not mean it is not sufficiently original to avail itself of copyright protection, but it is another complicating factor that makes this case far from straightforward.  Finally, California’s Right of Publicity Statute protects a person’s name, voice, signature, photograph, and likeness, but not necessarily a person’s gestures or moves.  In determining “likeness” California courts have used the “readily identifiable” test (e.g., whether a person could reasonably determine that the use in issue depicts the plaintiff) to decide whether the right of publicity has been violated.  Thus, Ribeiro will have to show that the Dance Move is so closely intertwined with his persona that it becomes “readily identifiable” with his likeness.  It will be interesting to see how these claims progress and what kind of impact the decisions will have on the entertainment industry as a whole.        

Depp v. Bloom: Hollywood Handshake Deals May Be on the Way Out; Belt-and-Suspenders a Possible New Trend in Percentage Fee Arrangements for Legal Services

While former Judge Alex Kozinski of the Ninth Circuit once noted that “[m]oviemakers do lunch, not contracts[,]”[1] Los Angeles Superior Court Judge Terry Green’s August 28, 2018 decision in Depp v. Bloom, 2018 WL 4344241 (Cal. Sup. Aug. 28, 2018), may force legal professionals in Hollywood to skip lunch in favor of properly executed fee agreements.

In granting actor Johnny Depp’s motion to dismiss a counter-claim for breach of contract by Depp’s longtime attorney Jake Bloom in a dispute over legal fees allegedly owed to Bloom under a percentage fee agreement with Depp, Judge Green answered the question vexing entertainment attorneys for years: are percentage-based fee arrangements considered contingency fee contracts, and thus required to be in writing under California law?  Answering in the affirmative, Judge Green ruled from the bench on August 28, 2018, and issued a written decision on August 30, 2018, available here. Continue reading

Mega-Mergers: Impact on Business and Consumers

Following Comcast outbidding Disney for the purchase of Sky, a European satellite broadcaster, the next deal on the horizon seems to be a merger between CBS and Viacom. This comes hot on the heels of Disney’s acquisition of 21st Century Fox, and AT&T’s acquisition of Time Warner. With traditional players in the industry bulking up to counter the rise of streaming video giants such as Netflix, Amazon, Apple, and Google, the market for original content is changing in ways that will impact business and consumers alike.

  1. Branded VOD Services and Rising Costs to Consumers

Fewer companies having greater control over their product, including many beloved franchises, could mean rising costs for end users wishing to access the same variety and quality of content. Disney, for example, has withdrawn from its output deal with Netflix starting with its 2019 releases, in preparation for the release of its own streaming service. With the acquisition of Fox, Disney has added the Marvel franchise to its own considerable intellectual property holdings, which include the Avengers and Star Wars. AT&T, owner of, among other properties, Game of Thrones and Harry Potter, has recently announced plans to unveil its digital streaming service in late 2019. This model, pursued more broadly, would essentially create a handful of brand-specific streaming services. This has the potential to result in higher costs for the consumers who wish to access a wide variety of content. In the years to come, the traditional cable subscription may be remembered as a bygone bargain. Continue reading

Demystifying WGA Television Residuals

Under the Writers Guild of America Theatrical and Television Basic Agreement (the “Basic Agreement”), credited writers for television motion pictures, including episodic programs, are entitled to receive compensation for the reuse of their work, also known as residuals. Television residuals were first negotiated by the Writers Guild of American (the “WGA”) in 1953, under the theory that a rerun of an existing program reduces employment for new products. Consequently, residuals are payable for the reuse of a writer’s material, as opposed to the original exhibition. Though initially limited to programs made-for-television and to five rerun payments, residuals expanded over the years not only to include home video, pay television, cable, new media, and others, but also to payments in perpetuity.

Whether or not a television writer is entitled to receive residuals is ultimately governed by the WGA’s credit determination. Per the Basic Agreement, if the guild accords a “Written by” credit to a writer, such individual is entitled to receive one hundred percent (100%) of available residuals, while a writer that is accorded a “Teleplay by” credit can claim seventy-five percent (75%) of available residuals; if the guild accords only a “Story by” credit to a writer, he or she is entitled to receive twenty-five percent (25%) of available residuals[1]. Furthermore, for an episodic series, if a writer were entitled to Separation of Rights[2] and “Created by” credit on the series, such writer would be entitled to a residual on the creator sequel payment minimum payable for each episode of the series produced beyond the pilot. Continue reading

A Closer Look: Senate Passes Music Modernization Act

On September 18, 2018, after months of intense negotiations with various music industry groups and lobbying interests, the United States Senate unanimously approved the Music Modernization Act (now renamed the Orrin G. Hatch Music Modernization Act, “MMA”), clearing what many believe to be the last major hurdle required for the MMA to become the most significant piece of music copyright legislation to be signed into law in almost two decades.  The Senate version of the MMA will now be sent back down to the House for reconsideration (the House approved an earlier version back in April 2018 and is expected to approve the Senate version) before being signed into law by the President.

As with the House version, the Senate version of the MMA combines three main pieces of legislation, which accomplish the following: Continue reading

Update – Three Music Industry Reform Bills to Watch: Congress Introduces Legislation to Modernize Music in the Digital Age

On September 18, 2018, the Senate unanimously approved the Music Modernization Act, now renamed the Orrin G. Hatch Music Modernization Act, in honor of the retiring Utah Senator – an avid songwriter who spearheaded the bill.  This approval follows its unanimous passing by the House of Representatives in April.  Due to changes made by the Senate, the bill will now return to the House for approval before it can be signed by President Trump to become law.  Public praise of this significant step has poured out from a variety of major industry players including the NMPA, the RIAA, BMI, ASCAP, the Recording Academy, and SoundExchange.  The bill’s supporters have uniformly expressed that such legislation is crucial in the fight for fairness for music creators and that it will also confer benefits on consumers and copyright holders.  While the precise details of the alterations that were made to the Act are not yet clear, many changes appear to have influenced by holdouts from satellite and digital broadcasting services, including a compromise proposal from SiriusXM to pay half of the performance royalties for pre-1972 recordings under the CLASSICS Act.  As of this writing, it is expected that the bill will pass within the next few weeks, marking the first music licensing reform in over two decades. Continue reading

Recent Developments in IATSE, SAG-AFTRA, and WGA.

IATSE, SAG-AFTRA, and WGA have all been in the news this summer with respect to subscription video on demand (“SVOD”) and ad-supported video on demand (“AVOD”) platforms and the impact the continued growth of those platforms continues to have on the entertainment industry.

2018 IATSE Agreement and the Editors Guild.

IATSE leadership reached a tentative deal with the studios and networks in July to replace the prior agreement that expired on July 31, 2018. While the agreement is expected to be ratified in September by the bulk of IATSE members, the Editors Guild (Local 700) has rejected the agreement in large part.  Editors Guild members and leadership don’t think that the new agreement sufficiently addresses residuals concerns (as well as other health and safety issues such as sufficient turnaround time), claiming that residuals revenue (which fund the pension and health fund) from traditional avenues of distribution such as DVD sales has greatly decreased in recent years, but the corresponding growth of SVOD content (and revenue) has not been reflected in the IATSE agreement. However, leadership of the twelve other locals that make up IATSE think that the new agreement addresses this concern adequately and are actively encouraging their members to ratify the agreement.

IATSE Reaches Deal on New Three-Year Contract With Studios, Networks

Editors Guild’s Board Votes Unanimously To Urge Members To Reject New IATSE Film & TV Contract

Hollywood Editors Break with Parent Union IATSE Over New Studio Contract

The Potential Strike No One Wants to Talk About: Streaming and the Future of Hollywood’s Union Crews

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Ninth Circuit Provides Valuable Guide to Obtaining Copyright Protection for Customer Data

(Experian Information Solutions, Inc. v. Nationwide Marketing Services Inc.)

Those familiar with copyright law recognize the well-established principle that facts are not eligible for copyright protection. A compilation of facts may be eligible, however, if the selection or arrangement of facts reflects the requisite originality and creativity to warrant copyright protection. In Feist Publications v. Rural Telephone Service Co., the U.S. Supreme Court considered whether a compilation of facts in the form of a directory of customer names, addresses, and telephone numbers is eligible for copyright protection; the Court ultimately determined that the directory at issue, which merely listed all of Rural’s telephone subscribers in alphabetical order, lacked sufficient originality and creativity to be copyrightable. In a recent case, however, the U.S Court of Appeals for the Ninth Circuit determined that a similar list of customers could be – and indeed was – eligible for at least some level of copyright protection.

Experian Information Solutions, Inc. v. Nationwide Marketing Services Inc. focused on what plaintiff Experian – an information services company best known for credit scores and reports – terms its “ConsumerView Database,” or “CVD.” The CVD contains more than 250 million records, each pertaining to an individual consumer, and includes hundreds of data fields, including age, income, and purchase habits. Experian licenses portions of the CVD to various marketing companies for use in connection with marketing campaigns. Continue reading

Lombardo v. Dr. Seuss Enterprises, L.P.: Parody Hasn’t Outgrown Fair Use

On July 6, the U.S. Court of Appeals for the Second Circuit affirmed the Southern District of New York’s finding of fair use in Lombardo v. Dr. Seuss Enterprises, L.P., reiterating the protected nature of parody under the fair use doctrine even as it applies to some of the most beloved properties in entertainment – including children’s literature.

As a brief reminder of the facts, Lombardo was a copyright infringement case involving a parody of Dr. Seuss’ classic story How the Grinch Stole Christmas! The dispute centered around playwright Matthew Lombardo’s Who’s Holiday!, a one-actress play about a 45-year-old Cindy-Lou Who, the toddler-protagonist of the original story. Having long since “outgrew” her “no more than two”-year-old days and her wholesome, unflappable belief in the magic of Christmas, the play picks up where the Dr. Seuss tale left off: Cindy Lou has entered a turbulent marriage to the Grinch, borne his child, survived his untimely death, turned to drink and drugs, been incarcerated, and lost her daughter to foster care. A dark turn for Ms. Who, to say the least. Continue reading

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