1:08pm PT by David Kluft
Oscars: A Guide to Best Picture Intellectual Property Litigation
This article has been republished with permission from the Trademark and Copyright Law blog.
The film that wins the Best Picture Oscar this year is certain to attract more viewers and more box office receipts than it had before receiving the award. But Best Picture winners also tend to attract more lawsuits, including intellectual property claims. Plaintiffs show up out of nowhere claiming to be the true authors of the underlying work, infringing defendants come out of the woodwork to unlawfully grab a little bit of the success for themselves, and so on. Sometimes the lawsuits are just as worthy of attention as the films themselves but, until they start giving Most Litigated Picture award (which would almost certainly go either to Gone with the Wind or Titanic), you’ll have to make do with our comprehensive guide to intellectual property disputes (well, the published opinions, at least) involving past Best Picture Oscar winners. Enjoy!
The plaintiff in Caruthers v. RKO Radio Pictures, Inc., 20 F.Supp. 906 (S.D.N.Y. 1937) alleged that the film Cimarron, which was based on the Edna Ferber novel of the same name, was copied from his unpublished manuscript, The Sooners. The Court found that, other than the setting (the settlement of Oklahoma) and well-known frontier scenes a faire, there were no similarities between the works, with one exception: a character who, while fanning flies away from a dinner table, becomes distracted and either falls into a cake (Cimarron) or strikes one of the diners with the fan (The Sooners). The Court held that this fleeting incident had no functional relationship to the story, and could not serve as the basis for a copyright infringement action.
The Great Ziegfeld (1936)
The estate of Florenz Ziegfeld brought a trademark suit to enjoin screenings of The Great Ziegfeld, a biopic of the late Broadway impresario. The estate alleged that the use of the “Ziegfeld” name by the film misappropriated the good will that the estate had inherited from Ziegfeld, and amounted to unfair competition under New York law. But the court in Coffey v. MGM Corp., 160 Misc. 186 (N.Y. Misc. 1936) disagreed. Since the “Ziegfeld” business no longer existed to make use of the goodwill (the show did not go on after his death), and goodwill of a strictly personal nature could not be conveyed posthumously, the Court refused to enjoin the screenings.
Gone with the Wind (1939)
Gone with the Wind film producer David O. Selznick was unable to convince Gone with the Wind author Margaret Mitchell to authorize a sequel during her life. After Mitchell’s death, MGM claimed that a subsequent agreement with Mitchell’s estate granted it the right to create such a sequel. However, in Trust Co. Bank v. MGM, 772 F.2d 740 (11th Cir. 1985), the Eleventh Circuit affirmed that no such right had been granted.
MGM wasn’t the only one that couldn’t get enough of the film and its success. In 1979, an Atlanta theatre announced the opening of Scarlett Fever, an unauthorized musical play based on the film. MGM filed a copyright infringement action to enjoin the production. In MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979), the Court found that the works were substantially similar in terms characters, setting, plot and in many cases had identical dialogue. The Court rejected the defendant’s argument that Scarlett Fever was a protected parody of Gone with the Wind. The Court held that, although the play was presented in a humorous “cabaret” style and contained a few instances of arguable parody, it was predominately not a critical commentary but a derivative homage to the original. In other words, the play simply copied way too much from the film. The Court enjoined the production and later granted summary judgment for the plaintiffs.
The Wind Done Gone, on the other hand, was a parody. Alice Randall’s book retold the story of Gone with the Wind from the perspective of one of Scarlett O’Hara’s slaves, and intentionally borrowed characters and plot elements from the original in order to critique its romantic depiction of the Civil War-era American South. Mitchell’s estate brought suit and the District Court granted a preliminary junction against distribution of Randall’s book but, in SunTrust Bank v. Houghton Mifflin Co., 268 F. 3d 1257 (11th Cir. 2001), the Eleventh Circuit vacated the injunction as an unlawful prior restraint of speech and held that The Wind Done Gone was fair use.
Gone with the Wind merchandise has also been the subject of numerous trademark and copyright disputes, as we have previously reported here.
In 1941, Murray Burnett and Joan Allison wrote a play called Everybody Comes to Rick’s, the rights in which they assigned to Warner Brothers before the play was ever staged. The studio turned the play into Casablanca, one of the most iconic films of all time. In 1983, Warner Brothers produced a television “prequel” to the film, causing the playwrights to seek a declaratory judgment that the original transfer did not extend to the new derivative work. In Burnett v. Warner Bros. Pictures, Inc., 67 N.Y.2d 912 (N.Y. 1986), the Court of Appeals of New York affirmed dismissal of the claim on the grounds that the playwrights had failed to retain any rights, including with respect to derivative works.
From Here to Eternity (1953)
From Here to Eternity was based on a novel by James Jones, who served in the 27th Infantry Regiment, which was stationed in Hawaii just before the Pearl Harbor attack. Serving alongside Jones was Joseph Maggio. After the release of the film, Maggio took exception to the character of “Angelo Maggio,” and filed suit against the book’s publishers and the film’s distributors, claiming misappropriation of his name. The Court in People ex. rel. Maggio v. Charles Scribner’s Sons, 205 Misc. 818 (N.Y. Magis. Ct. 1954) dismissed the case, holding that the Angelo Maggio character, other than sharing a common last name, bore no similarities to the real-life Joseph Maggio, who had made no clear showing that the fictional character would be identified as him.
Also, in Columbia Pictures Co. v. National Broadcasting Co., 137 F.Supp. 348 (S.D. Cal. 1955), the Court held that that Sid Caesar’s “burlesque” teleplay, From Here to Obscurity, was a parody of the film and protected by the fair use doctrine.
The Bridge on the River Kwai (1957)
When film producer Kurt Unger learned of a non-fiction book about Allied prisoners of war who were forced to build a Japanese railway in Burma during World War II, he thought the story would make an excellent film, similar to the recently successful The Bridge on the River Kwai. Unger prepared a screenplay entitled Return from the River Kwai. When the studio that owned the rights to the original film learned of the project, it filed suit for trademark infringement, alleging that the title of the original film (even though based on a geographical location) had acquired secondary meaning. In Tri-Star Pictures, Inc. v. Unger,14 F.Supp.2d 339 (S.D.N.Y. 1998), the Court agreed, and found that Unger had “no legitimate reason” to use the title Return from the River Kwai other than to confuse consumers into believing, incorrectly, that it was an authorized sequel. Unger was permanently enjoined from using the title. Nevertheless, perhaps as the result of a subsequent settlement, Return from the River Kwai was finally produced in 1989. No Alec Guinness in this one, sadly, but the cast did include George Takei (Oh Myyy!).
The French Connection (1971)
Robin Moore’s non-fiction book, The French Connection, documents law enforcement efforts to bring down a drug trafficking ring. Francis Waters, a former federal narcotics agent, appeared in a photograph in the book, accurately identified. The book was adapted into the fiction film The French Connection. Waters claimed that his role was fictionally represented in the film by a character called “agent Mulderig,” and that this fictional representation constituted a misappropriation of his name and likeness (even though his name and likeness were not actually used). In Waters v. Moore, 70 Misc. 2d 372 (N.Y. Sup. Ct. 1972), the Court dismissed the claim, holding that New York right of publicity law did not give a person a cause of action merely because events similar to those he experienced in real life are depicted in fiction.
The Godfather (1972) and The Godfather Part II (1974)
When the estate of Mario Puzo announced its intention to release a novel called The Family Corleone, a sequel to The Godfather, the producers of The Godfather films sought a declaratory judgment that their 1969 contract to purchase the franchise rights from Puzo barred his estate from producing such derivative works. The estate filed breach of contract counterclaims, and argued that certain language which had been stricken from the contract (specifically the language granting the producers the right “to publish said work and/or adaptions thereof”) was proof that Puzo had retained the right to publish a sequel. In Paramount Pictures Corp. v. Puzo, 2012 U.S. Dist. LEXIS 139827 (S.D.N.Y. 2012), the Court held that the estate’s counterclaims were not preempted by the Copyright Act. The case settled shortly thereafter, and the book went on sale.
The Sting (1973)
In 1940, David Maurer wrote The Big Con, which documented the real-life activities of grifters in the 1930’s. Upon the release of The Sting by Universal Studios, Maurer and a production company to which he had licensed the film rights brought suit in Kentucky for copyright infringement. Another production company with a connection to Maurer decided to get into the act too, and filed its own suit in California. In Followay Productions, Inc. v. Maurer, 603 F.2d 72 (9th Cir. 1979), the Ninth Circuit affirmed dismissal of the California action for failure to join a necessary party (Maurer). The Kentucky action settled out of court.
Screenwriter Timothy Anderson, apparently a fan of the first three Rocky movies (all written by Sylvester Stallone), penned a treatment for a fourth film and submitted it to MGM. The treatment involved an East German boxer and a boxing match in the shadow of the Berlin Wall. Anderson claimed that MGM and Stallone used the treatment for the film Rocky IV (the one with Dolph Rundgren as Soviet boxer Ivan Drago). In Anderson v. Stallone, 1989 U.S. Dist. LEXIS 11109 (C.D. Cal. 1989), the Court held that the treatment was not entitled to copyright protection because it was an unauthorized derivative work using Stallone’s characters. The Court also found that there was no substantial similarity between the treatment and film. However, the Court did allow certain contract claims to survive summary judgment.
Annie Hall (1977)
Following the success of Annie Hall, Woody Allen look-alike Phil Boroff found himself in high demand. In Allen v. National Video, Inc., 610 F.Supp. 612 (S.D.N.Y. 1985), Allen convinced the Court that Boroff’s appearance in an advertisement for a video rental chain (Boroff was strategically placed next to a cassette copy of Annie Hall) was a Lanham Act violation because it created a likelihood of consumer confusion. The Court enjoined Boroff from appearing in similarly confusing ads.
But the following year, Boroff appeared in an ad for a clothing store holding a clarinet and evoking what Allen alleged was his “schlemiel” persona from the film. At the bottom of the ad was a disclaimer indicating that the person depicted was a celebrity look-a-like. Allen moved for contempt. The court reluctantly found that, although the ad was in “clear contempt” of the spirit of the earlier order, it did not violate its letter, which had been ambiguous as to whether such a disclaimer would be sufficient. The Court did, however, issue an amended order to prevent future violations. Later, in Allen v. Men’s World Outlet, Inc., 679 F.Supp. 360 (S.D.N.Y. 1988), the Court granted summary judgment in favor of Allen’s Lanham Act claims against the clothing store.
The Deer Hunter (1978)
In 1970, Harry John Klekas, a court bailiff from Salt Lake City, wrote The Fields of Discontent, a manuscript about a 20-year military veteran living in a small mill town in Utah. Klekas claimed that The Deer Hunter infringed his manuscript. However, in Klekas v. EMI Films, 150 Cal. App. 3d 1102 (Cal. App. 1984), the Court held that, other than the common theme of soldiers returning from war (and, in part, a “small mill town” backdrop), there was no substantial similarity between the works.
Driving Miss Daisy (1989)
Henry Denker claimed that his novel Horowitz and Mrs. Washington, which depicts the relationship between an old Jewish man and his African American physical therapist, was copied by the makers of Driving Miss Daisy. However, in Denker v. Uhry, 820 F.Supp. 722 (S.D.N.Y. 1992), the Court held that, other than the abstract theme of a relationship between an elderly Jewish person and an African American employee, there was no substantial similarity between the works.
Forrest Gump (1994)
Forrest Gump is notable in part because of special effects which digitally altered archival footage so that historical figures — such as President Kennedy and John Lennon — appeared to be speaking lines written by the film’s screenwriter. The inventor of a similar process — for digitally altering lip movements in order to dub moving images into different languages — brought suit for patent infringement. In Bloomstein v. Paramount Pictures Corp., 1998 U.S. Dist. LEXIS 20905 (N.D. Cal. 1998), the Court granted the defendant’s motion for summary judgment, in part because the plaintiff’s patent claims encompassed only translations of lip movements into foreign languages, and did not extend to the English-to-English digital alterations in the film.
Plaintiff “Princess Samantha Kennedy,” proceeding pro se, claimed that the film Titanic was copied from her own unpublished biographical works about her father, a whistleblower who was forced out of the United States Air Force during the 1950’s. In Kennedy v. Paramount Pictures Corp., 2013 U.S. Dist. LEXIS 43882 (S.D. Cal. 2013), the Court dismissed the action, finding that, “at best,” the only similarities alleged in the complaint were generic scenes a faire. The Court held that the similarities in language alleged by the plaintiff (e.g., a character who “slicks his hair back with spit” (Titanic) versus a character who “slicked back his greasy hair” (Kennedy’s work)) amounted to no more than ordinary expressions of ideas not subject to copyright protection. The Court also noted that Kennedy had brought a similar pro se suit several years earlier, alleging that 1994 Best Picture winner Forrest Gump was copied from her works.
Another pro se writer claiming to have written the base material for Titanic came forward in Manuel v. Paramount Pictures, 2001 U.S. Dist. LEXIS 16065 (S.D.N.Y. 2001). Dennis Manuel alleged that Titanic was substantially similar to his screenplay, Camp Terror, the story of a camp counselor who heroically fights off a group of ex-convicts. The Court held that the only similarities between the works included a female protagonist who “is trembling” in one scene, and therefore “no sane fact finder” would be able to find a substantial similarity.
In Jorgensen v. Epic/Sony Records, 2004 U.S. Dist. LEXIS 25328 (SDNY 2004), musician John Jorgensen claimed that the Celine Dion song "My Heart Will Go On," from the Titanic soundtrack, infringed his song "Long Lost Lover." The Court dismissed the claim on summary judgment, on the grounds that there was no genuine dispute that the defendant composers did not have access to the plaintiff’s work, and there was nothing to support an allegation of “striking similarity.”
In 2014, an extra who had played the part of “spindly porter” in Titanic filed claims against the makers of Ghosts of the Abyss, an IMAX 3D documentary about the actual Titanic wreck, which incorporated plaintiff’s scenes from the movie Titanic. The Court in Vijay v. Twentieth Century Fox, 2014 U.S. Dist. LEXIS 152098 (C.D. Cal. 2014), while refusing to dismiss certain contract claims, did dismiss plaintiff’s right of publicity count on the grounds that both Titanic and Ghost of the Abyss were expressive works in which plaintiff appeared for a “miniscule portion,” and to which plaintiff’s likeness added no economic value.
Even the props in Titanic have given rise to IP litigation. In 1998, Twentieth Century Fox sought to enjoin the Suarez Corporation from selling “Jewel of the Sea” necklaces, alleging both trademark and copyright infringement. These necklaces, allegedly copied from the “Heart of the Ocean” necklace that was prominently featured in the film, sold for only $19 (compared with $195 for an authorized replica). And in case you were wondering whether this was just a coincidence, the defendant’s ads placed the necklace alongside an actor resembling Leonardo DiCaprio (in fact, the very actor who served as DiCaprio’s stunt double in the film). The defendant avoided a TRO by voluntarily consenting to remove its ads from various publications. However, when it turned out that it was too late to stop 18 ads from being published, the studio moved to enjoin the defendant from filling the orders resulting from these ads. The Court in Twentieth Century Fox Film Corp. v. Suarez Corp., 1998 U.S. Dist. LEXIS 3487 (S.D.N.Y. 1998), finding that Suarez had attempted to cancel the ads in good faith and that the plaintiff “has not been so much as dented by defendant’s activities,” denied the motion and allowed Suarez to fill existing orders. The court reasoned: “we cannot believe that any person intent on going to Tiffany’s to buy a $200 necklace for a loved one would be deterred by the knowledge that a person of lesser means could go to Woolworth’s . . . and get a cheaper one.”
Shakespeare in Love (1999)
Plaintiffs Don Miller and Peter Hassinger were the co-authors of The Dark Lady, a screenplay “about William Shakespeare writing a new play and failing in love.” They shopped the screenplay to numerous studios, including the one that ultimately made Shakespeare in Love. Miller and Hassinger claimed that film infringed their screenplay, and filed a copyright infringement action. The Court in Miller v. Miramax Film Corp., 2001 U.S. Dist. LEXIS 25967 (C.D. Cal. 2001) agreed with the defendants that many of the similarities between the works were mere “stock scenes” (i.e., scenes a faire) that were typical of and necessary for the shared subject matter of the works — for example, historical characters and locations. However, the court further held there were enough similarities in protected expression to survive summary judgment. Both works involved Shakespeare suffering from writer’s block while under pressure to write a new play, burning the manuscript in frustration, then meeting a literate noble woman who knows his work by heart, has an affair with him, inspires him to overcome his writer’s block and stars in the new play prior to leaving for the New World. The case settled before trial.
The Lord of the Rings: The Return of the King (2003)
As we previously reported, Warner Brothers, makers of the blockbuster Lord of the Rings films, filed a trademark infringement action against Global Asylum over its new straight-to-video “mockbuster,” Age of Hobbits. The Court rejected Global Asylum’s First Amendment defense (pursuant to the Rogers v. Grimaldi test) because the word “hobbit” had no artistic relevance to the defendant’s film and because it would be misleading to consumers. Global Asylum also asserted a nominative fair use defense, arguing that “hobbit” had become a “generic” term used by the public to describe Homo Floresiensis, an early hominin. Finding that Global Asylum had presented no evidence to back up this extraordinary claim, the Court issued a TRO against further distribution of Age of Hobbits, and was affirmed by the Ninth Circuit in Warner Bros. Entm’t, Inc. v. Global Asylum, 54 Fed. Appx. 683 (9th Cir. 2013).
Million Dollar Baby (2004)
See those boxing fans in the background? They are actually “inflatable humanoid forms,” presumably cheaper and more cooperative than real live extras. Plaintiff, inventor of “Crowd in a Box,” claimed that its patents were infringed by the inflatable mannequins used in Million Dollar Baby, which had been created by the Inflatable Crowd Company. The Court, in Crowd in a Box Co. v. Inflatable Crowd Co., 2007 U.S. Dist. LEXIS 96493 (C.D. Cal. 2007), granted the defendant’s motion for summary judgment, holding that the patents were invalid for obviousness.
The Hurt Locker (2009)
In 2004, writer Mark Boal was embedded in an Army unit in Iraq where Jeffrey Sarver served as an Explosive Ordinance Disposal (EOD) technician. Boal eventually published an article about Sarver for Playboy Magazine, and subsequently wrote the screenplay for The Hurt Locker. Sarver claimed that the character of Will James (played by Jeremy Renner) was based on him and filed suit. He alleged numerous counts, including misappropriation of a likeness. In Sarver v. Hurt Locker LLC, 2011 U.S. Dist. LEXIS 157503 (C.D. Cal. 2011), the court dismissed Sarver’s complaint and held, inter alia, that the film was protected speech about a public issue, and that “whatever recognition or fame Plaintiff may have achieved, it had little to do with the success of the movie.” The Court also granted the defendants’ anti-SLAPP motion and awarded attorneys’ fees.
The Hurt Locker has also been the subject of a number of copyright infringement claims aimed at internet users who allegedly downloaded pirated copies of the film via BitTorrent. See Voltage Pictures, LLC v. Vazquez, 277 F.R.D. 28 (D.D.C. 2011).
12 Years a Slave (2013)
Although it has not yet resulted in a published opinion, we note that just about a month ago, composer Richard Friedman filed a complaint for copyright infringement, alleging that the music in 12 Years a Slave was substantially similar to his copyrighted work. Friedman’s complaint also includes counts for violation of his moral rights under French and German law.
Special thanks to Alice Yu, Foley Hoag Associate, for her research and initial drafts for this article.
David Kluft works in Foley Hoag LLP’s Litigation Department. Read more here.