Monthly Archives: February 2009

Use of Copyright Material in Background Scene: Gottlieb Development, LLC v. Paramount Pictures, Corp.: Fair Use Prevails, but Provides a Reminder of the Importance of Pre-Production Clearance

Intellectual Property: In Gottlieb Development LLC v. Paramount Pictures, Corp., 2008 WL 8396360 (S.D.N.Y. 2008), the Federal Court for the Southern District of New York recently decided a case involving the use as a background prop of a pinball machine, in the movie What Women Want. As described by the Court, the scene at issue involved stars of the film, Mel Gibson and Helen Hunt, “brainstorm[ing] with other employees to develop these ideas for marketing certain consumer products to women. At various points during the scene, . . . a pinball machine – the “Silver Slugger” – appears in the background.” The Silver Slugger machine is distributed by the plaintiff and was apparently used in the film without its approval.

The Court denied the plaintiff’s claims for copyright and trademark infringement for use of the pinball machine in the background. In large part, both of these claims were dismissed on the rationale that the use was de minimus (only utilized minimally). The Court noted that the machine was only shown in the background; was never the focus; did not serve as a central part to any of the plot line; and was only present in a three-and-a-half minute scene out of a film running over two hours.

Although the film production company prevailed in this case, the fact that it was litigated at all emphasizes the importance of having an attorney conduct a final clearance review of a production before the work is distributed, published or sold. Such a review can help identify copyright infringement, branding concerns, trademark infringement and music clearances all of which generally need to be addressed before promoting or distributing a production. At the very least, such a review can be helpful in troubleshooting any potential issues and help identify legal risks sooner rather than later. Furthermore, it is important to keep in mind that other production companies, distributors and/or networks could condition a sale on an assurance that the originating company obtained all rights free and clear from the claims of any third parties. By preparing ahead of time, production companies can help prevent possible infringement actions, as well as increase the production’s viability of being picked up by third parties.


© 2009 Nissenbaum Law Group, LLC

New York Enacts the Piracy Protection Act

Intellectual Property: Effective as of December 2008, New York has a new law directed at curtailing “multimedia” privacy, and is specifically aimed at preventing music and movie pirating.

The new law strengthens and enhances New York’s laws that relate to recording entertainment productions. Specifically, the law makes the recording of a motion picture or live theater production a first, second and third degree crime, depending upon the wrongdoer’s intent in recording the work. Specifically, the act becomes a second degree crime if the recording is done “for financial profit or commercial purposes;” where the person has been previously convicted of violating the Piracy Protection Act in the past five years; or where the recording constitutes a substantial portion of the performance.

Moreover, the use of a recording device in a theater becomes a first degree crime if the wrongdoer if he commits the second degree crime and has been previously convicted of a second degree violation of the law within the past ten years. A first degree violation is considered to be a felony.

Notably, however, to have committed a third degree violation of the Piracy Protection Act, the law is very broadly construed. For instance, it does not appear to matter the quantity of the performance that is recorded. Rather, the mere use of a recording device in a theater is enough to trigger a violation of the law. Moreover, a “theater” for the law’s purposes is very broadly defined so as to include concert halls, theaters and auditoriums for various types of performances. There is, however, an exception built into the law for student performances.


© 2009 Nissenbaum Law Group, LLC

Film Production Company Avoids Copyright Infringement Suit on Basis of Statute of Limitations

Intellectual Property: State and Federal law provides various remedies for parties who have been wronged by another. However, depending upon the nature of that claim, the injured party only has a limited time period in which to assert his claim. These deadlines, set by the law, are commonly referred to as “statute of limitations.” The statute of limitations for a copyright infringement claim is generally three years. A potential plaintiff’s claim often revolves around when the claim originally accrued that determines whether or not his lawsuit was timely filed.

This was addressed in a recent Southern District of New York case, Ortiz v. Guitian Brothers, Inc., et al., 2008 WL 4449314. The Ortiz case was derived from a film production company engaging an artist, Mr. Ortiz, to create the musical score for the motion picture. When Mr. Ortiz later claimed that the film production company infringed his copyright in incorporating that score into the movie and not paying him royalties, he sued for copyright infringement.

In copyright cases, the statute of limitations generally begins to run when the plaintiff knows or should have reason to know of a potential infringement. Courts make a distinction in evaluating this time period, though, when copyright ownership is at issue. In other words, if the party alleged to have infringed upon the work is claiming that it owns the work, such a claim changes the evaluation of the statute of limitations.

In Ortiz, the defendant-film production company defended the lawsuit by arguing that (a) they did not engage in copyright infringement and (b) the claim was also time-barred by the statute of limitations. The film production company included copyright notices on the DVD which arguably asserted a claim in the copyright to the sound recording. In addition, the defendant-film production company also filed for and received a US Copyright registration for the film. In this regard, the production company claimed that the copyright in and to the musical score for the film was incorporated within this filing. Without addressing this question, the Court determined that such a copyright notice and filing was clear evidence of the film production company’s assertion of a claim of ownership over the score. In fact, the Court noted that since Mr. Ortiz authored the work “with the knowledge that it was going to be used in the Motion picture, he should reasonably have anticipated that [the film production company] would seek to copyright the Motion Picture prior to or in conjunction with marketing and distributing it and, in the exercise of reasonable diligence, discovered [the film production company’s copyright] registration.”

In other words, the Court determined that

     (a) the plaintiff needed to exercise due diligence in learning of a copyright registration that would have asserted an ownership claim and
     (b) by making such a filing, the film production company did so assert its ownership so as to start the running of the statute of limitations.

“As ‘[c]opyright ownership claims accure swhen (sic) a plaintiff knows or has reason to know of the injury upon which the claim is premised, . . . [a]n express assertion of sole authorship or ownership will start the copyright statute of limitations running.” (citations omitted).

Accordingly, Mr. Ortiz’s claim was dismissed because the Court determined that the claim accrued upon the film production company’s assertion of ownership, which was more than three years prior to Mr. Ortiz’s institution of the lawsuit. This case underscores the importance of evaluating potential infringement claims in a timely manner, and undertaking enforcement action as quickly as possible. Moreover, the case points out another benefit to making an appropriate copyright filing: based on the Ortiz decision, film production companies should be sure to promptly file copyright registrations as they can effectively be deemed to put potential plaintiffs on notice of the company’s assertion of ownership and therefore start the statute of limitations clock. In other words, the sooner the film production company files the registration, the sooner it can argue that the statute of limitations started, therefore helping to preclude a future claim.


© 2009 Nissenbaum Law Group, LLC