April fools beware – truth is stranger than fiction

David Rinaldo is a member of the KNOWlaw Group of the Toronto law firm of McMillan Binch. This article was prepared with the assistance of Diana Cafazzo and Simon Chester.

In the last few months, a number of lawsuits have been reported that seem too bizarre to be true. But don’t be fooled – all of these cases are real, and all of them point out the growing importance of treading carefully when it comes to using characters, faces, names and even ideas that someone else may feel is his or her property.

Cheers’ Norm and Cliff replaced by Robots

Everyone remembers ‘Norm’ and ‘Cliff’ as they were played by George Wendt and John Ratzenberger on the popular television series Cheers. Now, though, someone else has taken over the playing of these roles – airport bar robots. Wendt and Ratzenberger have sued Host International – the operator of a chain of airport ‘Cheers’ bars. These bars are modeled after the set of the Paramount-produced program, and are equipped with animated robotic figures that sit at the ends of the bars, locations normally reserved for ‘Norm’ and ‘Cliff’ in the actual series.

Before building these bars, Host obtained a licence from Paramount but was unable to make a deal with either Wendt or Ratzenberger. As a result, the robots were named ‘Hank’ and ‘Bob,’ rather than ‘Norm’ and ‘Cliff.’ In the opinion of federal District Judge Manual Real, they did not bear ‘any similarity at all’ to Wendt and Ratzenberger, ‘except that one…is heavier than the other…’. Judge Real stated their ‘facial features are totally different’ and dismissed the actors’ suit – twice.

But the first dismissal has been reversed because Judge Real had based his decision on only photographs; not having seen the actual robots. The second dismissal has also been overturned by a higher court, which decided that the robots bore a sufficient resemblance to the actors to support the continuation of the suit. The case has been remanded for trial. Stay tuned.

Elvis sighting

Elvis is alive and well in court rooms everywhere.

A team of writers alleged that a tv program, The Elvis Conspiracy, infringed their copyrights in three unpublished books that advocate the theory that Elvis is still alive. However, the suit was unsuccessful as the court found that the similarities between the books and the television program ‘involved only non-copyrightable ideas and facts.’

Elvis Presley Enterprises successfully stopped a nightclub from calling itself the ‘Velvet Elvis,’ as the court found the name violated trademark rights.

In England, however, Elvis Presley Enterprises was defeated by Sid Shaw, a London entrepreneur who sells Elvis memorabilia. Britain’s top court ruled that Elvis’ name was not entitled to the legal protection sought and allowed Shaw to use it as a trademark for his toiletry products. Standing on the steps of the High Court with an Elvis Presley look-alike, Shaw stated after his victory: ‘I’m trying to keep Elvis’ memory alive. Hopefully fans will now help me to do this by buying our Elvis souvenirs.’

Sein Trek

What do Seinfeld and Star Trek have in common? Both have been the subject of recent lawsuits concerning books.

In the Seinfeld case, Beth Gollub, a huge Seinfeld fan, coupled her love of the popular television series with a talent for writing and produced a trivia quiz book called The Seinfeld Aptitude Test. Her book was published by Carol Publishing Group; nbc distributed copies of it with promotions for the series; and the show’s executive producer characterized it as ‘a fun little book.’

There was one small problem though. Neither Gollub nor Carol Publishing obtained a licence from Castle Rock Entertainment, Seinfeld’s producer and copyright owner.

Castle Rock did not take this oversight lightly and sued both Gollub and Carol Publishing for copyright infringement. The defendants argued that the book copied only a few fragments from each of the 84 separate episodes and that the book copied unprotected ‘facts’ from the series. They failed on both counts.

The court treated the entire series as a copyrighted ‘work’ and ruled that the book’s 643 fragments clearly crossed the quantitative copying threshold. As for the latter argument, the court stated: ‘Unlike the facts in a phone book, which `do not owe their origin to an act of authorship’, each `fact’ tested by The [Seinfeld Aptitude Test] is in reality fictitious expression created by Seinfeld’s authors.’

Castle Rock was awarded $403,000 in damages and a permanent injunction.

Carol Publishing was again involved in a similar incident having recently published, without copyright or trademark licences from Paramount Pictures, The Joy of Trek. This is a book by Sam Ramer, the bulk of which consists of synopses of the major Star Trek plots and story lines, descriptions of the major Star Trek characters and aliens, and descriptions of Star Trek technologies.

Carol Publishing tried again to run the old `we only copied 160 of the over 14,000 pages of script,’ the same argument that was oh so successful in the Seinfeld suit. They further contended that the book was not infringing because it is ‘simply the author’s `description’ of that which he saw while watching Star Trek’, which proved to be equally futile.

The result, a preliminary injunction was granted in favor of Paramount Pictures barring Carol Publishing’s further publication of The Joy of Trek.

Faces in the crowd

Dustin Hoffman, who ironically starred as a cross-dresser in the hit Tootsie, was victorious, to the tune of us$1.5 million, in a case against a magazine that printed a computer-generated image of him wearing a dress. The magazine used Hoffman’s image along with those of Cary Grant, John Travolta and Marlene Dietrich to promote a spring fashion line in a 1997 layout called Grand Illusions.

Along similar lines, Corel Corp. has recently settled a lawsuit initiated by Hedy Lamarr for using her likeness without permission on the cover of CorelDraw 8, the company’s flagship graphics software product, and also on the company’s Website. The settlement follows on the heels of a judgment in Orlando, Florida, that required the company to stop displaying Lamarr’s image on the packaging.

Corel is also involved in a lawsuit over its use of such art works as Leonardo da Vinci’s Mona Lisa and others by European masters in a line of cd-roms it produces and sells. The suit alleges that Corel has wrongfully reproduced the images without the prior approval of the holder of the reproduction rights.

Stephen Weingrad, representing the rights holders, noted that the case hinges on murky copyright laws that are being formed to deal with new forms of media. He said the crux of the case is: ‘Can you take a picture of the Mona Lisa and own the rights to it?’ While the financial stakes of this case may not be very high, it could have far reaching effects on the software and publishing industries.

Muppets and Dudley

prepare for battle

Don’t think that we here in Canada are immune from such legal battles – three recent claims prove that we can’t afford to feel smug.

The Muppets are apparently a lot more ornery and litigious than they look. The Jim Henson Company, which controls rights to the Muppets created by the late puppeteer, is suing Montreal-based Cinar Corporation. Henson Co. feels that Cinar’s popular puppets, Wimzie, Horace, Jonas and Loulou, look a bit too familiar; they are alleging unfair competition and copyright infringement.

Dudley The Dragon, the popular children’s television show star, is embroiled in a multimillion-dollar lawsuit.

Danielle Jones, a Toronto-based freelance graphic artist and designer, is suing Breakthrough Films, public broadcaster tvontario and the Ontario Ministry of Energy, alleging that she is the author of the original artwork on which Dudley The Dragon was based.

Jones is claiming to be the owner of virtually all residual copyright and is asking for her commensurate share of the projected licensing and merchandising revenues associated with Dudley. The claim places Dudley’s overall value at $1 billion. Now, that’s no laughing matter.

The University of Toronto has settled its lawsuit with Paramount Pictures, distributor of the movie Varsity Blues. The institution claimed the movie had damaged the reputation of its own Varsity Blues football team.

Sharon Bradley, Blues alumni director, noted ‘…I think the [movie title] was a play on words in their mind, but they just didn’t bother to do a name check.’

Paramount has agreed to make a contribution to the university and place a disclaimer on the video and book, indicating that the team depicted is fictional and not based on the U of T Varsity Blues athletic program.

A fool’s paradise

As the millennium draws to a close, we’ve accumulated a big storehouse of great ideas, images and characters just waiting to be used. But don’t be fooled – they’re not necessarily free for the taking. People are asserting their rights more aggressively than ever before. So be careful – it’s getting worse out there.

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice in any particular situation.)