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.

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