9:01am PT by James J.S. Holmes and Kanika D. Corley
Why It's So Hard to Get the Law to Protect a Good Joke (Guest Column)
Through the years, comedians have noted how difficult it is to suppress joke thievery. "You have a better chance of stopping a serial killer than a serial thief in comedy," offered stand-up comedian David Brenner. "If we could protect our jokes, I'd be a retired billionaire in Europe somewhere — and what I just said is original." Renowned Vaudeville and Broadway comedian W. C. Fields took a different approach. Reportedly, Fields paid $50 to have a thieving comic's legs broken.
Comedians work hard to refine their craft, which often results in the creation of an intangible asset — a signature style of comedy. Such assets are deserving of intellectual property rights protection — but which one(s)?
Under the Copyright Act, protection extends to original works of authorship fixed in any tangible medium of expression, now known or later developed. It follows that artistic content in tangible form, such as a comic's written jokes performed to an audience (or recorded), is entitled to protection. Taken to its logical conclusion, if comedic works are copyrightable, then those who engage in "joke thievery" should find themselves subject to suit for copyright infringement, thereby entitling the complainant to the Copyright Act's statutory damages and attorneys' fees.
Not so fast! A thorough review of the tenets of the Copyright Act when viewed in the context of professional comedians raises a problem.
Although comedians may start with a written work — a script — the performance of the work rarely occurs without deviation. As a result, copyright may not issue because the work of authorship is not "fixed" in the manner necessary to establish a basis for protection. Stated differently, it is not possible to "fix" a performance that involves, for example, audience interaction. Accordingly, the only protection that may exist for the writer-performer is the right to protect that singular performance, but not the right to stop others from taking and then performing the content. As a result, the joke thief may actually prevail.
But what about protection under the Lanham Act, which protects trademark holders?
Similar to manufacturers of hard goods, comedians rely on branding in an effort to promote source identification. In this regard, branding is synonymous with trademarking. Comedians rely on this informal trademarking as a vehicle to promise audiences that if they purchase tickets, they will be privy to a certain style of humor. However, inevitably, others detecting that the material and/or style is well received might attempt to appropriate portions of the act.
Over the past 30 years, comics have attempted to protect their intangible assets by initiating lawsuits against other performers claiming both copyright and trademark infringement. Those finding success relied on credible evidence establishing the comic's identifiable audience base as well as the comic's brand (material and style). The prevailing comedians demonstrated that their infringers were unfairly capitalizing on what had come before.
Some of the notable cases:
Joan Rivers v. Frank Marino
In the 1980s, Joan Rivers sued a male performer who impersonated her in a Las Vegas show. She alleged copyright infringement claiming that Marino used copyrighted material and that advertising for the show was misleading. In his defense, Marino argued that it is not possible to impersonate Rivers and her kind of humor on stage and not use some of her material. Marino further took the position that "comedians borrow from each other all the time. Joan does it, too." Following resolution of the lawsuit, the two comics reconciled, and even appeared together on television in later years.
Jeff Foxworthy v. Custom Tees, Inc.
In 1995, Jeff Foxworthy filed suit when he learned a company was engaging in the sale of shirts displaying versions of Foxworthy's "redneck" jokes. The defendant T-shirt manufacturer copied a number of Foxworthy's jokes, changing only the order of premise and punch line. On one shirt, for example, the copy read, "If you've ever financed a tattoo . . . you might be a redneck." Foxworthy claimed that the T-shirts violated his copyright and trademark rights. Ultimately, the court held "You might be a redneck if . . ." attained secondary meaning because it had become the tagline by which Foxworthy was widely known. The Northern District of Georgia granted Foxworthy's request for an injunction.
Gallagher v. Gallagher
In the early 1990s, "prop comic" Gallagher's younger brother, Ron Gallagher, asked him for permission to perform shows using Gallagher's Sledge-O-Matic routine. Gallagher permitted the use on condition that Ron made it clear in promotional materials that it was Ron and not Leo Gallagher, the original, who was performing. After several years, Ron began promoting his act as "Gallagher Too" or "Gallagher Two." In some instances, Ron's act was promoted in a way that provided no clue to prospective attendees that they were not seeing the original Gallagher.
Leo Gallagher first attempted to stop his brother from performing these activities by requesting that he not use the Sledge-O-Matic routine. However, in 2000, Leo Gallagher sued his brother for trademark infringement and false advertising. Leo prevailed, obtaining an injunction that effectively stopped his brother from performing any act that impersonates the "prop comic" in small clubs and other commercial venues.
While these suits tell a tale of victory for the comic whose notable cadence was misappropriated, not all patent references to another's works is an infringement — sometimes it's just parody.
Parody involves the appropriation of another's mark as a well-known element of popular culture, which is then built upon in an effort to contribute something new for humorous effect or social commentary. In defense to claims of intellectual property infringement, asserting the use is "parody" suggests that consumers would not likely confuse the protected content with the challenged content because of the obvious differences.
In the context of comedy, parody and satire are difficult to distinguish from truthful replications. Which leads to the question: Is Carlos Mencia an infringer?
Since the mid-2000s, Mencia has been under fire for allegedly performing material first published by multiple noteworthy comics.
In a show called No Strings Attached, Mencia performs a piece about a father who tirelessly trains his son for a career in football, only to see the son say, "I love you, Mom!" at his moment of televised victory. Years earlier, Bill Cosby performed a very similar bit in his concert film Bill Cosby: Himself. In addition, Bill Cosby wrote briefly on the subject in his book Fatherhood. Mencia told the Los Angeles Times that he had never seen Cosby's film but regretted the "similarities" between his and Cosby's jokes.
While the pieces are similar, and one may have inspired the other, American jurisprudence disfavors monopolies. Instead, we promote the creation of new material that improves on earlier works. Bill Cosby's experience is likely from the perspective of an African-American in the Northeast around the Civil Rights era. Presumably, Carlos Mencia's experience varied because of his ethnicity, age and birthplace. Although social norms and professional standards dictate that performers either obtain permission and/or give credit, Mencia's use of the premise for his performance, in this instance, may be permissible.
But, what happens when there appears to be a pattern of borrowing? Does the parody defense lose its strength?
In 2005, comedian Joe Rogan wrote a post on his website publicly accusing Mencia of being a plagiarist. Then on Feb. 10, 2007, Rogan confronted Mencia onstage at The Comedy Store in Hollywood. A video posted by Rogan showing the onstage altercation interposed audio and video clips from other comedians including George Lopez, Reverend Bob Levy, Bobby Lee and Ari Shaffir, among others, lending support to Rogan's accusations.
In an interview on The Howard Stern Show, Lopez accused Mencia of plagiarizing 13 minutes of Lopez' material during an HBO special. According to Lopez, the two had a physical altercation over the issue. Subsequently, another comedian, Ted Sarnowski, countered Lopez' claim, stating he was "first in time" to perform the joke, that it was later performed by George Lopez, and that Sarnowski actually gave Mencia permission to perform that which Lopez claims was stolen.
In 2009, an episode of South Park entitled "Fishsticks" satirized Mencia's alleged penchant for plagiarism. In the episode, a Mencia character takes credit for a joke that somebody else had written. When faced with the prospect of being assaulted, he admits, "I took credit for it because I'm not actually funny! I just take jokes and repackage them with a Mexican accent!"
It is likely that a comedian found to be a serial borrower may be adjudged an infringer rather than a clever parodist. Ultimately, this decision will be made by a trier of fact.
Referring to the days of Vaudeville, in 1989, American comedian and actor Milton Berle explained that etiquette only required that "the borrower add to the joke and make it his own." Naturally, with so many comics making observations about the world around them, similarities in content presentation are bound to exist. For those comics determined to be effective and successful for long careers, maintaining control of intellectual property rights is both essential as well as a dubious task.
James J.S. Holmes is a partner and co-chair of the Media, Entertainment & Sports Law Practice, in residence in the Los Angeles office of Sedgwick LLP. Kanika D. Corley is an associate member of the Media, Entertainment & Sports Law and Live Entertainment groups of Sedgwick LLP.