Barbie vs. Bratz - You can't script this reality show

Brief Update regarding last week’s blog entry: One day after the announced settlement regarding “Shaq Vs.” and pointing out that ideas are not copyrightable I pointed to the example of Pros Vs. Joes on Spike as a prior example of a similar idea. On Thursday, I found a lawsuit brought by two men from Long Island against Spike TV for infringing on its script for a similar reality television show (Yes, I know I just wrote script for a similar reality show.) See Complaint here. I will continue to monitor to the case and keep the blog updated.

Part of the premise to last week’s blog is that ideas themselves are not copyrightable but the expression of those ideas. Partially based on this premise, the Ninth Circuit reversed an injunction for copyright infringement in the ongoing Mattel v. MGA Entertainment Inc. case involving Bratz dolls.

To briefly summarize, Carter Bryant, an individual employed by Mattel to design fashion and hairs styles for collectible Barbie dolls, developed the concept of Bratz including the names of some of the characters, sketches, and sculpt. Bryant allegedly violated his employment contract with Mattel by presenting the idea for Bratz dolls to MGA. At trial, the jury found generally that MGA was liable for copyright infringement and enjoined MGA from “producing or marketing virtually every Bratz female fashion doll."

One of the issues that should have been decided was whether Bryant’s employment contract assigned rights to Bryant’s works were created outside the scope of his employment. (If it was within the scope of Bryant’s employment, it would be a work made for hire and Mattel would be the author of the work.) Because this issue was not decided, the Ninth Circuit vacated the copyright injunction.

While the appellate court agreed that Mattel owned the copyright and MGA had access to the sketches and sculpt, whether the Bratz dolls infringe on the sculpt and the sketches was still an open question. One of the reasons the question remained open is due to the fact that only the particular expression of the doll idea was covered by copyright not the idea of the doll itself. “Otherwise the first person to express any idea would have a monopoly over it.” Mattel v. MGA Entm’t Inc., Appl No. 09-55673 at 10540.

The Ninth Circuit finds that the substantial similarity must be based on what is protectable – not idea. The court finds that the expression of an attractive young, female fashion doll with exaggerated proportions can only be expressed so many ways – for the sculpt – but not for the sketches. Thus, the court finds the sketches can have broad protection for the substantial similarity test.

The court remands the case to filter out the ideas within the sketches to determine whether the sketches were infringed by the Bratz dolls. The court also advises the district court that while some of the first Bratz dolls were substantially similar to the sketches a large majority of the subsequent generations of Bratz dolls evolved. Any substantially similarity to the original sketches to the subsequent generations may have only been similarity to the ideas.

The appellate court vacated the injunction and remanded. There are other pending issues on appeal including damages which are yet to be decided.

The Whole Shaquille

This recent article regarding a settlement reached in the television show “Shaq Vs.” reminded me about an overlooked element of copyright law by many – an idea is not copyrightable.

The case was filed in a Los Angeles Superior Court and thus, it is unlikely that there was an allegation of copyright infringement. Yet, this is a difficult concept for many to understand but copyright protects the expression of an idea, not the idea itself. 17 U.S.C. Section 102(b).

In the “Shaq Vs.” case, Plaintiff Todd Gallagher sued Endeavor Talent Agency alleging that Plaintiff’s book “Andy Roddick Beat Me with a Frying Pan” was the basis for the “Shaq Vs.” television show. Apparently Gallagher through his talent agency had attempted to “shop” his show to various networks; however, the show moved forward with Shaq (another client of Endeavor) replacing Gallagher.

“Shaq Vs.” features Shaquille O’Neal challenging famous celebrities and sports stars in the field for which they are famous. Examples include boxing against Oscar De La Hoya and beach volleyball against Kerri Walsh and Misty May-Treanor.

Gallagher’s book is based on stories where the author challenged professional athletes where the athletes would face a handicap such as Andy Roddick playing tennis with a frying pan.

While the case was settled out of court, it may be that there were more specific facts or instances that were highly similar (or there may have been a non-disclosure agreement) or bad blood between Gallagher and Endeavor but it seems that the underlying idea may have been taken but this is not copyright infringement.

An idea or broad concept cannot be copyrighted. One of the simplest reasons that this is true is because if every idea could be taken, there would not be any incentive but every new book, television show, etc. would merely be a re-tread of something already done.

In this instance, Gallagher’s book may have provided an idea but there are differences. Clearly, Gallagher’s competitions involved a handicap to the sports professional. “Shaq Vs.” does not always have gimmick handicaps such as using a frying pan for a tennis racket. Also, while Gallagher’s book appears to be sports oriented, “Shaq Vs.” includes such competitions this season as cooking against Rachel Ray and a spelling bee against the National Spelling Bee Champion.

Also, Gallagher’s book could easily be based on other prior ideas such as “Pros v. Joes” (which began in March 2006) which was prior to the publication of Gallagher’s book in October of 2007.

Viacom v. YouTube, Part III - Limitations of Liability

The final part of the Viacom v. YouTube trilogy focuses on the DMCA limitations of liability in Section 512.

A copyright includes a certain bundle of exclusive rights such as distribution, reproduction, public display, and the right to make derivative works. See 17 U.S.C. § 106. Under the DMCA, Section 512 provides the limitations for liability for online materials specifically for online service providers.

Under the statutory scheme of Section 512, there are several subsections for different liabilities. For example, 512(a) is a safe harbor for “infringement of copyright by reason of the provider’s transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections…” This is followed by specific conditions:

1. the transmission of the material was initiated by or at the direction of a person other than the service provider;
2. the transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the service provider;
3. the service provider does not select the recipients of the material except as an automatic response to the request of another person;
4. no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and
5. the material is transmitted through the system or network without modification its content.

Section 512 (b) is for storage for system caching with specific conditions and 512 (d) is for infringement by reason of reference or linking to an online location with infringing materials or activity.

Viacom v. YouTube, Part II

Last week Part I of the Copyright Chronicle's discussion of the Viacom v. YouTube opinion covered YouTube's protection under the "safe harbor" provision of §512(c) the Copyright Act and the red flag test to determine when facts or circumstances of infringing activity is apparent.

Part II discusses the Court's analogies to Tiffany v.Ebay and Grokster in its opinion.

The district court's opinion makes 2 analogies which are troubling. The first is the correlation to the Tiffany v. Ebay decision in the Second Circuit and the second is the correlation between Grokster (and related cases) and YouTube.

The Ebay Analogy

Starting on page 18 of the Viacom decision, the Court discusses the recent Second Circuit decision in Tiffany v. Ebay. Ebay was found not liable for contributory infringement when a significant number of the TIFFANY goods sold on its website were found to be counterfeit. The Court compares Ebay’s generalized notice that some of the Tiffany products sold on Ebay are counterfeit with YouTube and similarly decides that YouTube is not liable for infringement. However, there are distinguishing facts and circumstances.

First, unlike eBay, YouTube has control over the infringing material. eBay may sell goods through its website; however, eBay itself never had possession, custody or control over the goods themselves. eBay has no way of inspecting or reviewing the goods to determine whether the goods are fake or real. (Although, eBay’s level of promotion and general knowledge regarding counterfeits of Tiffany products on its website may raise a question regarding false advertising versus fair use.)

YouTube does have possession, custody and control over the submissions of users. (YouTube requires that videos posted to its website be uploaded to its servers.) Viacom had evidence that YouTube monitors the content of its website. See Page 39 and footnote 20 of Viacom’s Opposition to YouTube’s Motion for Summary Judgment and YouTube’s Answer to the First Amended Complaint at ¶ 39:

“Defendants admit that the Terms of Use contain certain content-based restrictions on the types of videos users may upload and store on the service, and that YouTube reserves the right to remove from the service material uploaded in violation of YouTube’s Terms of Use.”

The Court quickly brushes aside YouTube’s “monitoring” as defensible as part of providing online service citing 17 U.S.C. § 512(m)(1) and monitoring for cataloging or editor review to provide information location tools under 17 U.S.C. § 512(d). See Pages 14 and 16.

However, YouTube’s affirmative step of reviewing video posts for content should present not only a question of fact (the case was decided on summary judgment), but also a different analysis than eBay. The standard must be raised for an internet service provider who monitors and reviews the content. YouTube chooses the content it wants to make available on its website.

Unlike eBay, YouTube knows what goes up on its website. While there is apparently less monitoring now, it does not change the fact that YouTube specifically monitored the content being posted for more than mere categorization. See Footnote 20 of Viacom’s Opposition to YouTube’s Motion for Summary Judgment.

As alleged in the Complaint, YouTube was actively looking for and removing pornography from its website. If such content based decisions were being made by YouTube, YouTube is more than an online service provider and merely adhering to the safe harbor provisions is a cop out.

A higher standard must be applied when content is being reviewed in the first instance and more than for references to “pirating,” as proposed by the Court’s decision as a red flag for copyright infringement. It could not be Viacom’s burden under these circumstances to know which specific videos were monitored. YouTube is in complete control of the videos and the decisions after reviewing the content of its posts – both general and specific. (If YouTube does not keep records or tracking of the specific videos reviewed for content, how could YouTube prove that their knowledge was only general? Again this is another instance of a factual inquiry which should not have been resolved at summary judgment.)

While the Court takes some solace in the success of the notice and takedown provisions under the DMCA by claiming that the problem is fixed after notification to YouTube, it is of little solace to the copyright content owners whose exclusive rights and work value is already diminished.

Perhaps fittingly and unwittingly, in quoting the eBay decision, there is an indication that there is a solution for Viacom and other content providers: “Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.” See Page 20.

Perhaps, the proposal in the previous posting that Viacom could put everyone on general notice (and perhaps YouTube on specific notice) that none of its content is permitted on the Internet to be streamed and provided an indicator (such as the CBS eye or Comedy Central logo in the corner) may appropriately satisfy the Second Circuit’s requirement for liability.

The Grokster Analogy

The Court’s analogy between Grokster, Fung, Lime Group, and the infamous Napster cases seems to make a better case that Napster and other peer file-sharing website may have been simply before their time and as the law catches up, there may be different results. The Court relies heavily on the statement of Viacom’s General Counsel that the behaviors of Grokster and YouTube are not the same. But I am not sure how this matters or of the complete context of this statement.

In distinguishing YouTube from Grokster, the Court finds that Grokster’s conduct did “not comport with that of a service provider who furnishes a platform on which its users post and access all sorts of materials as they wish, while the provider is unaware of its content, but identifies an agent to receive complaints of infringement, and removes identified material when he learns it infringes.” See Page 23.

Given the broad definition applied to service providers (which would include YouTube), it is difficult to say that Grokster (and for that matter Napster) was not a service provider. Grokster and Napster provided a platform for the exchange of information online. Napster, at its height, was unlikely to be aware of (or even capable of ascertaining) all of the content posted on its website. There is also a clear argument to be made that Grokster had generalized knowledge similar to YouTube. The difference then is really that Grokster and Napster did not have complaint departments and did not or could not remove specifically identified information.

I think that analogizing YouTube to Napster and Grokster and their progeny may have unintended ramifications. It would seem all you need is a DMCA notice and takedown policy and Napster, in its previous form, would still be around today.