The Current State Of IP Litigation In The Entertainment Industry

Tuesday, March 26, 2013 - 11:28

The Editor interviews David E. Fink, Partner and Chair of the Entertainment and Media practice group, and Edward E. Weiman, Partner in the Entertainment and Media and the Litigation practice groups, both resident in the Los Angeles office of Kelley Drye & Warren LLP. In its March 11 issue, the Hollywood Reporter announced the outcomes of two high-profile intellectual property cases in the entertainment industry. Both were handled successfully by Kelley Drye’s Los Angeles office, and a third case was reported as underway and inspiring much commentary in the industry. We present comments from Messrs. Fink and Weiman on the current state of IP litigation in the entertainment industry.

Editor: Please tell us about your background and current practices.

Fink: Early in my career, I worked for several years at a firm that had a substantial entertainment and First Amendment litigation practice. As my career continued, I had many fantastic opportunities to learn from lawyers and clients alike, and I continued to deepen my experience in the areas of entertainment and media law. At Kelley Drye, entertainment- and media-related matters continue to be the largest component of my practice. My practice includes copyright, trademark, idea submission, profit participations, contractual disputes, and First Amendment issues like defamation and invasion of privacy. I also provide strategic counseling to clients to help them avoid disputes and to resolve existing disputes effectively.

Weiman: I help companies and individuals in the entertainment industry protect their intellectual property and contract rights. I worked in the industry for many years before becoming a lawyer, so I believe that I have a unique ability to see things from the perspective of my clients. It informs my approach to client education and pre-litigation counseling, as well as the handling of disputes arising out of intellectual property, idea submission, and privacy claims; talent, production, and distribution agreements; and media liability insurance. That makes up the bulk of my practice, and it has for the last 16 years.

Editor: What IP issues are most frequently at stake in litigation pertaining to the entertainment industry?

Fink: In terms of intellectual property, the primary issues continue to be copyright, trademark and state law claims arising out of the theft of ideas. Recently, patent litigation has been more common in the entertainment space as technology and entertainment have fused. There are many ways to deliver entertainment in the current market, ranging from traditional feature-length motion pictures to video games and social media. The spectrum of delivery technologies continues to grow very rapidly. As a result, we now see claims go far beyond disputes over ownership of content. There is also some fusion between intellectual property and First Amendment issues, especially since technology enables publication to reach so many people so quickly.

Editor: We understand that idea-submission cases can involve a broad spectrum of claims and issues. Can you expand on what these claims involve?

Weiman: We have seen idea-submission claims run the gamut from the simplest alleged submission (“You should really make a movie out of this book – it would be great!”) to the more bizarre (“I crashed a Hollywood party and pitched my idea for a movie about party crashing to a well-known studio head”). The claims in these types of cases have similarly run the gamut from traditional express and implied contract claims, to more non-traditional unfair competition and even trade secret claims. There is no limit to the facts and law that resourceful plaintiffs have resorted to, but fortunately, the courts have been very good at seeing through the smokescreens and sorting these cases out.

Editor: Have you encountered situations in which there were multiple claims of authorship for the same project? Please talk about these situations and also more generally about legal strategies that you’ve found to be successful for your clients.

Fink: Yes, we see this quite often. I can recall a reality television program in which there were as many as five or six separate plaintiffs, each of whom insisted that he or she was the only person on earth who could have come up with the idea for the program. I once handled three separate claims over a motion picture in which the plaintiffs each insisted that their ideas were unique. That’s the problem with certain ideas – they are so good, or just so obvious or general, that lots of people come up with them in some form or another. Once we investigate a claim and realize that it has no merit, we always try to explain to the other side why we think the claim will fail – in an effort to save all parties time and money. Sometimes that’s a tougher sell than you might think because humans have egos, and nobody likes to be told that his or her brilliant idea is not really special. Sometimes we find that telling the idea submitter that there are others with the same idea is persuasive. Often, the plaintiff simply cannot accept the truth and tries to find ways to reason around the bad news. Sometimes we can tell, based upon the situation, that telling the plaintiff that his idea is not original will do no good, so we try other avenues to resolve the case, either informally or on the merits.

Editor: What is your overall impression of what constitutes a defensible “original idea” in the fast-paced entertainment and media space? What role does the element of time play in these matters?

Weiman: The issue of originality, in the sense that something is new or novel, is not a legal prerequisite to either an idea-submission claim under California law or a copyright claim. However, the more unique an idea or written work is, the more difficult it will be to get rid of a claim where the challenged work shares some of the more unique or original elements of the plaintiff’s work. This is definitely more true in the idea-submission context, since copyright does not protect ideas, unique or not.

Timing can play a significant role in these cases as well, particularly if a plaintiff fails to make a claim either during the relevant statute of limitations, or in any other reasonable period during which you might expect to hear from them. We had one case where the plaintiff sued for co-ownership of the copyright in the movie “Flashdance” – twenty years after the movie was released. We had a very strong defense, even beyond the statute of limitations, and the suit was ultimately dismissed because the plaintiff had signed a release and grant of rights at the time. Regardless, the sense that someone has finally made a claim long after any reasonable person would have tends to pervade a suit like that and diminish any chance of success for the plaintiff.

Fink: Although timing is not everything, it definitely matters. For example, having pre-existing materials for the development of an idea tends to show the independence of its creation, even though pre-existence is not a requirement to independent creation, as we have recently seen in the case law. It’s all about reasonable possibility of use. For example, if an idea is transmitted in very close temporal proximity to the completion of a final product, it diminishes the likelihood that anyone could have used the idea because the project would have been well underway already at the time of disclosure. Similarly, if the idea was transmitted long ago, say many years earlier, this also tends to disprove access since the likelihood that there is anyone around who remembers the idea diminishes with time.

Editor: Has the Hollywood culture changed in terms of how ideas are floated with colleagues (i.e., sometimes via back-of-the-napkin discussions)? How have today’s newer media, such as social media, affected this process?

Weiman: No, I don’t think so. The studios and networks have continued to be more careful about handling unsolicited submissions, including making sure that people aren’t sending in ideas via e-mail or other social media. That said, no matter how scrupulous the process is, you’re obviously not going to ask Steven Spielberg or Katheryn Bigelow sign a submission release when they want to pitch an idea, nor is the process going to look remotely like the formal pitch meeting that might be taken with a relatively new writer or director.

Fink: Yes, pitch meetings still happen and ideas are still shared between potential collaborators – back of the napkin still happens. In addition, there are now additional ways to “throw your script over the fence,” as they say. Of particular concern are high-volume, unsolicited email blasts. No matter how many people are targeted, the ideas are still unsolicited. Also, for the would-be plaintiff in those situations, sending your idea to that many people is sort of like “blurting it out.”

Editor: Let’s talk about breach of contract claims. How are these disputes usually negotiated and resolved?

Fink: Usually, the first step is to investigate the claim and determine whether there is any potential that it has merit. These claims usually do not, and sometimes we can find clear proof that an idea was not stolen. For example, several times, we have been able to identify the date upon which the alleged access occurred and then prove, through interviews, traditional paper documents, or forensic computer work, that our clients’ work was independently created. When the other side is reasonable, we are frequently able to resolve the dispute right there. Other times that evidence is less conclusive and the case proceeds until it is resolved on the merits. It is different when there are co-authors involved, because co-authors often come up with ideas when the creative impulses are flowing and there is excitement in the air. It seems that bars, beaches and coffee houses are often places where ideas are born. That means that the co-creators often fail to make any agreements about ownership of their ideas in advance. At that point you are either in a copyright dispute or you are in much murkier water in terms of defining an implied agreement.

Editor: I understand that certain claims, such as those involving copyright waiver, are often defeated as a result of innovative legal strategies that focus in more technical issues. What are your thoughts here?

Weiman: It’s not as easy as it looks to get rid of a claim at the outset of the case, since the law generally gives every favorable inference and every procedural break to the plaintiff during this process. However, we have been successful in having cases dismissed early on (either on a demurrer or motion to dismiss, or on summary judgment) by focusing on the thresholds necessary for a plaintiff to make out a claim, and the evidence in our own clients’ files that might defeat a claim. Many of these claims will fail because the works at issue are simply not similar enough, or we have unassailable evidence that our client created the challenged work either before and/or completely independent of any submission by the plaintiff. This often involves a fair amount of computer forensic work to properly date notes, outlines, treatments, etc., as well as expert testimony on the history of certain types of plots, characters, settings, and the like. In a very real sense, each case is like an archeological dig that requires both specialized tools and a deep knowledge of the subject matter so that you don’t miss something in the process that might well be fatal to the plaintiff’s claim.

Editor: Tell us about some of your non-litigation-related activities, such as CLE, articles and in-house client presentations, as well as the more consultative aspects of your practices.

Weiman: In addition to my litigation practice, I have given a wide variety of CLE presentations to clients, most often on new developments in copyright, trademark, idea submission and defamation law. In the last year alone, I probably gave 10-12 presentations to clients in the television, motion picture and publishing industries on these topics, and published as many articles on these and other intellectual property issues. The CLE presentations, in particular, give us an opportunity to sit down with clients in an informal setting and learn about particular issues that they are confronting now, so that we can get out ahead of a potential dispute or litigation issue by consulting with the client during the development or production process. This is an area where my industry background comes in particularly handy, since I’m familiar with the process in a way that most entertainment lawyers are not, and since I care about the people and the issues involved on a personal level.

Fink: Being part of a practice area means staying abreast of the current state of the law and learning new things from your colleagues. It is important to learn as much as possible about what others are doing – other cases, other strategies that succeed or fail and other opinions about best practices. It is for the same reason that I like publish writings about topics that I think others in my field will find informative or interesting. I find that CLE presentations are a particularly effective means of communicating with our clients and colleagues, both in terms of giving our clients additional tools to protect their businesses and in terms of learning what their evolving needs are. These kinds of presentations are personal and can be tailored to the specific needs of particular groups. I have also been fortunate to have many strong relationships with my clients. There are many opportunities to provide consultations and assistance at the outset, when there are measures that can be taken to avoid litigation. I find this kind of work particularly fulfilling.

Please email the interviewees at dfink@kelleydrye.com or eweiman@kelleydrye.com with questions about this interview.