We all know that guy or lady – the one who does impressions, or makes up a character and has us laughing all nite. Well, it was no laughing matter to Hank Azaria when he was threatened with infringement of a character he created that went viral. Azaria v. Bierko, C.D. Ca CV 12-9732 GAF (2/21/2014).
Azaria is an actor and voice performer (among many other voices, he voices several characters on the Simpsons). Since about 1986 Azaria kept his guests in stitches at parties with a fictional baseball announcer voice. In 1990 he was introduced by a mutual actor friend (Matthew Perry) to Craig Bierko – another comedian, who also did a fictional baseball announcer voice and character. They interacted with their characters and often “riffed” on their characters. Azaria wanted to use the voicing of Bierko’s announcer but Bierko refused.
Fast forward to 2010 (about 10 years later) when Azaria publishes a video on Funny or Die (note: has mature content) with a Baseball announcer character “Jim Brockmire”, and it goes viral. Azaria is considering expanding the “character” into more short stories or videos, but Bierko threatens Azaria for violation of his Baseball announcer voice and character – and Azaria sues for a declaratory judgment of non infringement/non violation of rights.
Bierko’s “character” was not well defined – and it was only twice fixed in a tangible medium – both times only in audio and in both cases, only the voice provided character definition. Azaria’s character was only fixed in a tangible medium once – however, the video has other announcers who “define” the character traits by describing Jim Brockmire, and Azaria’s portrayal of the fictional Jim Brockmire in the short video gave the character additional identifiable traits (type of clothing, style of announcing, over the top movie references etc) – many more attributes than those of Bierko’s 1 dimensional voice character. Ultimately the court ruled in Azaria’s favor. The court also held Bierko’s character was not protectable.
There is no legal question that fictional characters can be copyrighted, and hence, achieve protection from infringement. However, the character must be rather well developed – either textually or via audio or video means.
This case demonstrates a number of issues we see regularly in our media practice – a confluence of ideas (which are generally not protectable absent a contract), and multiple people building one thought or idea on top of another until something actually creative and protectable is born. When that happens – what are the rights of the parties? Who owns the character that is born?
Likewise, we often encounter the reverse issue – a creative person sees a short video or skit, or reads some story (whether about a real or made up person) and then their ideas start to form and they develop a story or character from that interaction with existing content. If they write that story or make the video, will they infringe the person/content they referenced or built upon? Was it fair use? Was the content even protectable?
The court avoided the 1st Amendment issue – but there is a also a strong question here whether the video – which is a classic parody of baseball announcers in general, would be actionable. Recall the numerous funny skits of Will Ferrell as Harry Caray – all protectable as fair use paraodies.
We enjoyed the Azaria case because it describes a rather typical scenario . . . where the creative thought process takes a long time to develop and sources from interactions with third parties (sometimes at parties) who at least provided a germ of an idea. If the facts had been changed only slightly (say that Azaria had never done a baseball announcer until he met Bierko) would the result have been different?
Determining whether a creative character is infringed, or can be protected, and to what extent, can be complex. If the media presentation is a classic parody you can fall back on the 1st Amendment in many cases – but if the character is going to be used in a more mainstream manner, it is important to consider both possible infringement issues, as well as protection issues. In terms of protection issues, as the Azaria case demonstrates, it is important that the fixation of the character (e.g. in audio, audio-visual, or textual mediums) describe a multidimensional and complete character.
For media clearance and protection issues please feel free to contact Mike Oliver or Kim Grimsley at Oliver & Grimsley.
We meet a lot of clients that fail to obtain a written agreement, or blindly sign the form provided by the developer – and when a dispute arises, only too late realize the problems created by that lack of diligence. This post addresses critical provisions in a website development agreement.
First, you want to make sure you will own the material and content created by the developer. Thus, you want a provision in the agreement (which must be in writing) that recognizes that the developer’s work for you is considered a “work made for hire” and you want a copyright and intellectual property assignment as well. These clauses ensure that, although the developer is not your employee, you are the owner of the website materials and intellectual property rights. You do not want to find that your website designer created something unique for you only to discover the same unique layout on another website. Many businesses are surprised to learn that in the absence of this statement in a written agreement, an independent contractor (in this case the website developer) typically is the owner of work they create, and the business at most would be a licensee of the material. This means you don’t own the work; rather, you only have permission to use it.
Second, you want to have a provision in the contract that states that the work on the website is the website developer’s original work and/or that the developer has the necessary permission/licenses from the owners to use the work on your site. For instance, the website developer may place photographs on your website – you want the developer to represent that the developer has the right to use those photographs on your website (i.e. either the developer took the photos or it has the permission to use them). If the developer uses photographs owned by a third party on your website without the third party’s permission, the third party could claim you are infringing on their copyright by displaying their work on your website without their permission, and would demand you cease use of the photos and may demand damages as well. Thus, have your website developer represent the work is original or that he has permissions to use all work on your website.
Third, make sure to have an indemnification provision in your agreement. This provision should provide that the developer will indemnify you in the event you incur damages or a loss due to a third party claim that you are infringing their intellectual property rights – where they claim the work on your website is actually their material. For example, a business thinks the graphics on its site are original, however, it receives a cease and desist letter from a third party alleging that its use of the works on its website without the third party’s authorization is copyright infringement and demands damages. Under Copyright Law, if the third party is the owner of a registered copyright in the work, the business as an unauthorized user could be subject to statutory damages ranging from $700 to $30,000 for unintentional infringement, and up to $150,000 for willful infringement. Thus, if material placed on your website by your developer is subject to a claim or legal action for infringement, you want your developer to indemnify you for these actions since you are relying on their knowledge, creativity and skill in developing and designing your website.
Finally, it is important that you make sure that the developer periodically delivers all source codes and native files to you, and that you control all passwords and access to critical website assets, such as the domain registration. You want to make sure that such files and access rights cannot be withheld in the event of a dispute. Thus, if a dispute arises, the developer’s sole remedy should be money damages. You should not be prevented from transferring the work done (to the point of a dispute) to a new developer, so you can finish your site, and deal with the dispute separately.
For more information, please contact Kim Grimsley.
In University of Alabama v New Life Art, the 11th Circuit Court of Appeals resolved a portion of a long standing dispute over the protection afforded authentic reproductions of college uniforms. A painter made paintings (and calendars) accurately depicting University of Alabama games. For many years this practice was unlicensed, but done with the knowledge of the UofA. Later, the painter began using the paintings he created on mugs, towels, t shirts and so on. Eventually the University of Alabama required use of accurate depictions of the uniforms to be licensed, and the artist refused. Therein ensued litigation, now in its 7th year.
The 11th Circuit held that “An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.”
Thus the paintings were held to be protected under the implied fair use rights under the 1st Amendment, even though they depicted the uniform colors. The other issues were remanded as the record had not been developed on them (somewhat surprising after 7 years of litigation!)
It should be noted that the University had licensing agreements with the artist in some respects (they gave him press credentials to access games and allowed him to create a painting live on air at one point – without however licensing his subsequent sales of reproductions of those paintings). The terms in the license agreement were very broad, but not broad enough to cover the colors on the uniforms when shown on a uniform.
This case demonstrates that the cost of fair use determinations is substantial, and the findings can be somewhat limiting – indeed, it is not clear the artist will prevail on the other claims – he apparently did not raise fair use on appeal as to them, and there is an argument that the licensing agreements he had signed did cover those items.
Use of an aggressive trademark holders marks, even trade dress, without a license, and even with a fair body of case law finding fair use, can be very risky.
For more information, contact Mike Oliver or Kimberly Grimsley.
In a decision in the Oracle v Google case, the court held that APIs – application program interfaces – small amounts of human readable source code, are not sufficiently original to qualify as copyrights. This decision can impact API licenses, which most likely are based on copyrights.
What Google did. Google decided that to construct a mobile platform operating system (ultimately, the Android operating system) it wanted to be able to “interoperate” with java programs – in this way, developers could rapidly publish their programs written in Java, to the mobile platform. In order to do this, however, Google either needed a license to the Java virtual machine to allow it to “port” it to the mobile hardware, or it needed to emulate that environment. Google approached Sun (later bought by Oracle) for this license, but the parties never agreed. Google eventually copied the names of the base classes and methods, and wrote its own original code to implement the particular functions. So as an example, a Java program would call a function, using the precise identical name of the function, class or method, but the “behind the scenes” black box code in Android that returned a result, was written by Google and not copied from Java. Google did a few other things (for example, they decompiled some executable code in Java, and used the source code derived from that to test their own software compatibility, and they included verbatim 9 lines of code in a range check function, which the court utterly dismissed as De-minimis copying)
What Oracle claimed. Faced with having examined 15 million lines of code and discovering that only the structure, sequence and function was copied, Oracle took the position that it had a copyright in that structure, function and sequence.
What the court held. The parties had agreed that the issue of copyright was for the court to decide, with the jury being the arbiter of any infringement or damages. The court did a very good job of reviewing the history of protection of computer software – which really started in about 1980, with amendments to the Copyright Act that recognized computer software as a literary work. (this case is very well written and researched, so I can commend it to anyone who wants a crash course in software law)
The trouble with the copyright protection, however, is that copyrights cannot protect ideas – that is the exclusive domain of patent law. So, whenever a copyright expresses an idea, we often say that the idea is free but the expression of it may not be. However, where there is only a limited way of expressing the idea – courts hold that the idea then “merges” into the expression, becoming inseparable, and renders that particular expression free from copyright protection. That is what the court held here – essentially, the court said that if you want to protect the sequence, function and structure of how a software program works, you must use patent, and not copyright, law. This ended the case for Oracle, as Oracle had lost on patent infringement.
The court summarized the best argument as follows: “Oracle’s best argument, therefore, is that while no single name is copyrightable, Java’s overall system of organized names — covering 37 packages, with over six hundred classes, with over six thousand methods — is a “taxonomy” and, therefore, copyrightable under American Dental Association v. Delta Dental Plans Association, 126 F.3d 977 (7th Cir. 1997).” (emphasis added)
What impact does this case have? In the abstract, this case follows a fairly well defined line of cases that have denied copyright protection to such things as menu structures and programmatic access to underlying operating systems. In this regard, the case does not change the law. However, in a bigger picture view, and with particular reference to the amount of copying here – all of the main class and method calls in Java were replicated verbatim . . . it could be seen as a step toward requiring either very good contracting practice, or patenting, to protect access to a software language system. The only other way to protect access is under the Digital Millennium Copyright Act – installing and using a sufficient technological measure that must be decrypted in order to access content.
If a software developer desires to restrict access to base operating code, the Oracle v Google case poses a significant barrier to reliance on copyright alone. As stated above, the developer should consider proper contract language, patenting the system, and use of encryption technology to unlock such access.
For more information contact Mike Oliver.