Certainly, lawyers in every practice area have encountered disputes that defy all reason - either because the subject matter is bizarre, or the parties are bizarre, or both. But for intellectual property practitioners, cases that skirt the edge of rationality (and sometimes leap over it) are even more common, perhaps because the law in this area often concerns creative works and the artistic process. Take, for example, the lawsuit brought against 20th Century Fox by publicist Ivy Supersonic, who claimed the studio had infringed on her "Sqrat" squirrel-rat hybrid character creation (See Silberstein v. Fox Entm't Group, Inc.
, 536 F. Supp. 2d 440 (S.D.N.Y. 2008)), or the copyright claim asserted against Google by the makers of a giant, blue inflatable gorilla (Scherba Indus. v. Google, Inc.
, No. 10-2288 (N.D. Ohio complaint filed Oct. 7, 2010)). There is no shortage of wonderfully weird disputes in this area, and the handful summarized here all deserve a place in the annals of copyright history.
Sounds of Silence
Copyright protection has been well established to extend to ideas "fixed in any tangible medium of expression," such as drawings, sheet music, or sound recordings. (17 U.S.C. § 102(a).) For their part, sound recordings are defined as "works that result from the fixation of a series of musical, spoken, or other sounds." (17 U.S.C. § 101.) Nonetheless, in an incident that was widely reported a decade ago, the estate of composer John Cage was said to have raised legal objections when British composer Mike Batt inserted a minute of silence as a divider between sections on an album he produced. Batt credited the minute of silence to "Batt/Cage" in homage to Cage's famous composition 4'33"
, a work composed of three silent movements of different durations which when added together total four minutes and 33 seconds of silence. Batt, in an effort to distinguish his silence from Cage's, argued tongue-in-cheek that his composition was superior to Cage's since Batt's silence was digital, while Cage's was analog. The parties apparently settled their dispute out of court after they performed their respective silences in front of an audience, with Batt conducting an eight-piece classical ensemble through one minute of silence, and a solo clarinetist silently performing Cage's 4'33"
There are two interesting footnotes to this dispute. First, Batt claims to own the rights to many other silent compositions of various lengths, which begs questions that were the subject, in part, of at least one scholarly article on the question of copyright protection for minimalist art (Rikki A. Sapolich, When Less Isn't More
, 47 IDEA 453, 470 - 72).
Second, and more intriguing, is that the Cage-Batt dispute may not have actually happened. Despite much publicity in 2002, Batt recently suggested that the incident may have been an elaborate, avant-garde joke intended to foment debate about copyright issues. If so, it succeeded. After all, you've followed the discussion this far, haven't you? Read on. We promise that the rest of the conflicts in this article actually took place.
Thou Shalt Obtain a Copyright
Attempting to copyright absolute silence is one thing, but what about the voice of God? While the federal Copyright Act does not expressly require human authorship of works subject to its protection, they typically must entail some element of human creativity. The Ninth Circuit held as much in a case involving (what else) a work purportedly authored by celestial beings, but nonetheless transcribed, collected, and compiled by mere mortals: "[F]or a worldly entity to be guilty of infringing a copyright, that entity must have copied something created by another worldly entity." (Urantia Found. v. Maaherra
, 114 F.3d 955, 958 (9th Cir. 1997).) And neither of the parties in the Urantia
case disputed that the work at issue was written by "non-human spiritual beings described in terms such as the Divine Counselor, the Chief of the Corps of Superuniverse Personalities, and the Chief of the Archangels of Nebadon." (114 F.3d at 957.) To paraphrase Bill Murray in Stripes
, we definitely want to party with these guys.
More recently, an Arizona district court was presented with another complaint filed on behalf of none other than Jehovah J. God and Jesus J. Christ. The plaintiffs - God and Christ, of course - alleged that Arizona State University infringed upon God's copyright by using His "autobiography," namely, the Bible, without paying royalties (Jehovah J. God, Jesus J. Christ, William E. Moore and Jehovah Witness Found., Inc. v. Arizona State Univ.
, 2007 WL 1539324 (D. Ariz.)). The court dismissed the complaint on its own motion as "both fanciful and factually frivolous" after the plaintiffs filed a motion to proceed in forma pauperis
. After all, the suggestion that the complaining party lacked sufficient funds to pursue the case belies U2's observation that God "isn't short of cash, mister." ("Bullet the Blue Sky" from Rattle and Hum
In the same spirit (no pun intended), Penguin Books sued to protect a religious work that it published called A Course in Miracles
(Penguin Books U.S.A., Inc. v. New Christian Church of Full Endeavor, Ltd.
, 2000 WL 1028634 (S.D.N.Y. injunction issued July 25, 2000)). The Course
, as it became known, is a New Age treatise supposedly dictated to Columbia University faculty members in 1965 by a voice they identified as that of Jesus, although there was some dispute as to the precise source. After the Course
was written, the voice determined that "copyright registration should be sought for the Course
, ostensibly in order to preserve the form of the Course
against the possibility of incomplete or corrupted editions." The authors "listened to Jesus and proceeded to contact the [U.S.] Copyright Office"; the copyright registration they obtained listed "[Anonymous] (Helen Schucman)" as the author because "Jesus had cautioned her against publicly associating her name with it, lest people confuse her role with his and the Holy Spirit's." (2000 WL 1028634 at *4-5.)
Despite the work's purportedly divine origins, the district court in New York held that A Course in Miracles
could be protected by both copyright and
trademark law, and that Penguin did not commit fraud by publishing a version of the work since Jesus was not the author of the work for the purposes of copyright law (2000 WL 1028634 at *15, vacated
, 2004 WL 906301, on grounds that the Course
had been published, without notice of copyright, prior to the date listed on the copyright application). In doing so, the court found that the Course
was an original work, since it would have been different had it been "channeled through any other individual." The ruling went on to emphasize that "dictation from a non-human source should not be a bar to copyright." (2000 WL 1028634 at *12.) There is much more in the full opinion - including the terms parasensory, enneagrams
, and of course, iambic pentameter
, since much of the Course
was written in verse - but really, doesn't this tell you everything you need to know?
The "Dead Body Pose"
Ideas cannot be copyrighted, but there is an ongoing debate as to whether certain yoga routines may be, even though yoga has existed for thousands of years. Bikram Choudhury, founder of Bikram Yoga (a sequence of specific yoga positions and breathing exercises performed at a room temperature of approximately 100 degrees), is claimed to be the first to select and arrange the particular sequence of 26 yoga poses in a book he authored, taken from poses that themselves had already been in the public domain for centuries (Open Source Yoga Unity v. Choudhury
, 2005 WL 756558 (C.D. Cal.)). A California district court held even though the individual yoga poses may not be copyrightable, a "thin" copyright may be obtained for a specific sequence of them to protect "only the arrangement of [yoga poses] as specifically described in Choudhury's book." (2005 WL 756558 at *4.) In doing so, the court harmonized its holding with the U.S. Supreme Court's landmark decision finding that the obvious, alphabetical arrangement of factual information in a telephone book is not copyrightable - a bit of convenient trivia, since to achieve certain of the poses in Bikram Yoga you may actually need the help of a telephone book to balance yourself, perhaps during the "Toe Stand" or the aptly named "Awkward Pose." (2005 WL 756558 at *2 - 3; see Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.
, 499 U.S. 340 (1991).)
What's In a Name?
It is a basic tenet of intellectual property law that you cannot copyright your name. (See Kitchens of Sara Lee, Inc. v. Nifty Foods Corp.
, 266 F.2d 541, 544 (2d Cir. 1959).) Take the case of plaintiff Bob Craft, who legally changed his name to "Jack Ass" to promote awareness about the dangers of drinking and driving, helped by a cartoon character he created called Andi Ass and by slogans like "Be a smart ass, not a dumb ass." Some years later Mr. Ass (no, we really didn't have any choice) then filed a $10 million copyright infringement claim against Viacom International for the use of his name in association with the MTV reality series Jackass
. The copyright claim was dismissed after Mr. Ass failed to demonstrate that he had any copyrightable interest in his name, much less in the use of the word jackass
(Ass v. Viacom Int'l, Inc.
, No. 03-11 (D. Mont. order issued July 7, 2003)), giving wisdom to the old adage (okay, the new adage) that calling yourself "Jack Ass" and being
a jackass are not necessarily mutually exclusive.
That same year in an unrelated case, an Illinois criminal defendant accused of selling marijuana and possessing a gun claimed that the court had no authority over him in court proceedings without first paying him compensation for the use of his name (U.S. v.[Nameless],
328 F.3d 953, 954 (7th Cir. 2003)). In particular, the defendant - who shall remain nameless in this article - said he belonged to a religious sect that deems its members' names to be copyrighted. In keeping with his beliefs, he professed in open court, "You do not have my authorization for using my copyrighted name in this courtroom without compensating me. ... I am here to do business. If you want to do business, let's do business, or let's call it off and go home." (328 F.3d at 958.)
After the defendant was convicted, he proceeded to use his mailing privileges in prison to send the judge, prosecutor, staff in the clerk's office, and several potential witnesses copies of a "contract and security agreement" requiring them to pay $500,000 for each use of his allegedly copyrighted name (he dunned the judge alone for $151 million). (328 F.3d at 956.) The problem became so acute that the judge's clerks began asking not to work on the case out of fear that the inmate's bills would somehow interfere with their ability to obtain mortgages or student loans. In the end, the Seventh Circuit upheld the man's conviction after determining that he had been mentally sound to stand trial. As Judge Frank H. Easterbrook put it in his opinion, "[M]any a person with no defense would rather play games, and try to goad the judge into error, than face the music politely." And when it came to the defendant's sect that insisted on royalties for use of its members' names, the judge wrote: "One person with a fantastic view may be suspected of delusions; two people with the identical view are just oddballs." (328 F.3d at 956.) What he said.
Before anyone can obtain a copyright, he or she must first clear a few minor hurdles, such as depositing copies of the work with the Copyright Office. (17 U.S.C. §§ 408, 411.) This requirement proved problematic for James Kodadek, who sued MTV Networks and Mike Judge, creator of the animated television series Beavis and Butthead
, for copyright infringement, claiming that he
(not Judge) had created the main characters in 1991 (Kodadek v. MTV Networks, Inc.
, 152 F.3d 1209, 1210 - 11 (9th Cir. 1998)). Unfortunately for Kodadek, he had no original drawings of Beavis or Butthead from prior to the show's first airing in 1993. Instead, when Kodadek applied for copyright registration two years after
the show's debut, he included reconstructed drawings he supposedly made in 1993 based on his "memory" of drawings he supposedly created in 1991. Kodadek argued "he was so familiar with his 1991 drawings that he was able to draw virtually identical copies of them two years later from memory." But the court wouldn't go for it, noting it had found in an earlier case with similar circumstances that "the possibilities for fraud would be limitless." (Kodadek
, 152 F.3d at 1212 (quoting Seiler v. Lucasfilm, Ltd.
, 808 F.2d 1316, 1322 (9th Cir. 1987)). So Kodadek's fantastic (or fantastical) memory notwithstanding, his claims were dismissed due to the absence of a valid registration, thereby foreclosing a cognizable infringement claim (152 F.3d at 1212 - 13). Put differently, rather than "mixing memory and desire" to quote T. S. Eliot's "The Waste Land," Kodadek would have been better off spending more time at the U.S. Copyright Office, promptly registering his work.
John Fogerty v. Himself
Next, any who would contemplate selling off the rights in their works should make sure they don't wind up doing battle with themselves
for copyright infringement. In 1970 songwriter John Fogerty, a founding member of Creedence Clearwater Revival, wrote "Run Through the Jungle." Fogerty then sold the rights to the song to a company called Fantasy in exchange for a percentage of the sales and other royalties it would bring in. Fifteen years later when Fogerty published another song, "The Old Man Down the Road," Fantasy sued Fogerty for copyright infringement, claiming that the new song was essentially the same song he had previously sold to Fantasy, with different lyrics. Fogerty was not immunized against this result since the rights he had licensed to Fantasy with "Run Through the Jungle" included the right to create a derivative work from it (Fantasy, Inc. v. Fogerty
, 654 F. Supp. 1129, 1132 (N.D. Cal. 1987)). And so a jury found itself faced with the bizarre task of determining whether one Fogerty song sounded too much like ... well ... another Fogerty song. Ultimately, the jury decided that "The Old Man Down the Road" did not infringe on "Run Through the Jungle" (see 984 F.2d 1524, 1526 (9th Cir. 1993), and Fogerty eventually was awarded his attorneys fees for defending his work against, well, his work. (See Fantasy, Inc. v. Fogerty
, 94 F.3d 553 (9th Cir. 1996).) The lesson to young copyright holders should be clear: caveat venditor
, or "let the seller beware."
Barney Cries Fowl
The owners of the rights to Barney, the (in)famously optimistic purple dinosaur character, sued a fellow by the name of Ted Giannoulas for trademark and copyright infringement after he incorporated a Barney look-alike into his own routines as a sports mascot called The Famous Chicken (Lyons P'ship v. Giannoulas
, 179 F.3d 384, 385 (5th Cir. 1999)). Specifically, The Famous Chicken engaged in what the court said could "perhaps loosely be referred to as 'performance art,' " appearing alongside a Barney look-alike in an impromptu "dance-off," in which the dinosaur unexpectedly outdances the chicken. The chicken would then proceed to "flip, slap, tackle, trample, and generally assault" the Barney look-alike as part of the act. Though most of the audience no doubt found this amusing, there were apparently a number of children present who genuinely believed they were witnessing an attack on the real
Barney. In fact, Barney's counsel argued, "only after several days of solace was [one child] able to relate the horror of what she had observed in her own words - 'Chicken step on Barney' - without crying." In affirming the dismissal of the copyright and trademark claims on summary judgment, the Fifth Circuit ruled that The Famous Chicken's routine was a parody, and therefore permissible - crying children notwithstanding. (179 F.3d at 386 - 90.)
Better Off Dead
A little-used though sound defense to any copyright infringement claim is that the defendant is deceased (not to be confused with doing the "Dead Body Pose" in Bikram yoga, which will only make you look
like you are deceased). Attorneys for the late Gertrude Walton successfully employed this tactic when BMG, UMG, and Interscope Records accused her in a lawsuit of illegally sharing more than 700 copyrighted songs over the Internet under the screen name "smittenedkitten" (Walton had died at age 83 a month before the complaint was filed). The case was dismissed after the plaintiffs realized too late (yes, pun intended) that Gertrude Walton was probably not the "smittenedkitten" they were looking for (BMG Music v. Walton
, No. 05-77 (S.D. Va. compliant filed Jan. 27, 2005; notice of voluntary dismissal filed Feb. 4, 2005)). Perhaps some of the defendant's (alleged) downloads - songs like "Angel" and "The Heavens are Telling," as listed in an exhibit attached to the complaint - might have tipped them off.
Lapdogs of Luxury
Louis Vuitton Malletier, the French manufacturer of luxury consumer goods, sued Nevada-based Haute Diggity Dog for trademark, trade dress, and copyright infringement for its line of Chewy Vuitton products - including plush toys, beds, and other products for dogs bearing labels such as Chewnel # 5, Dog Perignon, and Sniffany & Co. (Louis Vuitton Malletier S.A. v. Haute Diggity Dog
, LLC, 507 F.3d 252, 256 (4th Cir. 2007)). But the court did not throw Louis Vuitton any bones (really, how could we not). The defendant successfully begged the court to agree that its use of markings and colors similar to those copyrighted by Louis Vuitton was a parody and therefore fair use, so the designer was forced to "roll over" on its copyright claims (507 F.3d at 269-270).
Fo' Shizzle, Your Honor
In England, the holder of a copyright enjoys various exclusive rights - among them the right not to have the work subjected to "derogatory treatment," which includes "distortion or mutilation" or an act that "is otherwise prejudicial to the honour or reputation" of the author" (Confetti Records v. Warner Music UK Ltd.
, 2003 EWCH 1274, ¶ 148 (Eng. and Wales High Ct., Ch. 2003). These rights, among others, were at issue in a dispute between a British rap group known as The Heartless Crew and the author of a song called "Burnin," which the group wanted to remix on a new album. In particular, the songwriter alleged that his work was subjected to derogatory treatment, given "the overlay of the song with a rap containing references to violence and drugs." To assess the merits of the claims, the court was, of course, required to decipher The Heartless Crew's lyrics. "This led to the faintly surreal experience of three gentlemen in horsehair wigs examining the meaning of such phrases as 'mish mash man' and 'shizzle (or sizzle) my nizzle'," the court noted (Confetti Records
at ¶¶s 10, 61, 151). Indeed.
The court went on to say that only an expert witness could interpret the rap lyrics in question, since even though they were a "form of English," they are, "for practical purposes, a foreign language." The court consulted the Urban Dictionary to interpret such phrases as "fo' shizzle my nizzle," which the court understood to mean "for sure," although the court was unable to find definitions for the phrases "sizzle my nizzle" or "mish mash man." Thus the court concluded that the rap group's lyrics did not prejudice the reputation of the author of the track, and that neither was there prejudice "from the fact that The Heartless Crew rode the rhythm right through the track." (Confetti Records
at ¶¶s 154, 155, and 158.)
We're not sure what that means, but we're quite "shizzle" that the court got it right. Probably.
Edward E. Weiman is a partner and Eric W. May is an associate in the Los Angeles office of Kelley Drye & Warren. They represent clients nationwide in entertainment, intellectual property, insurance, and general business litigation.