Tuesday, December 26, 2006

Copyright in Nude Photo Crushed by Grapes

Section 301(d) of the Copyright Act states that: “Nothing in this title annuls or limits any rights or remedies under any other Federal statute.” While there are a few other federal statutes where a conflict might arise, the federal trademark act has led to the most judicial ink being spilled. At one time, the Copyright Office was itself acting contrary to Section 301(d): it would refuse to register a claim in a visual work if a design patent had already issued. If the design patent hadn’t issued, the Office would register the claim even if it knew that a design patent had been applied for and indeed would issue shortly.

Blessedly, an early (1995) policy decision issued by Marybeth Peters less than a year upon becoming Register (in government time, almost overnight) abandoned this ultra vires policy, by amending 37 CFR §202.10, which had embodied the infamous “election of protection” approach. Section 202.10 was amended to declare that “The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship.” (Prior to 1974, the Patent Office had a similar policy, but abandoned it after the decision in In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974)).

A December 4, 2006 opinion by Judge Marilyn Hall Patel (of Napster fame), raises the problem of a possible conflict between trade dress protection and copyright: can trade dress protection trump the Copyright Act? (The Lanham Act has no equivalent to either Sections 301(a) or (d) of title 17). In Nova Wines, Inc. v. Adler Fels Winery LLC, 2006 WL 3498574 (N.D. Cal. Dec. 4, 2006), plaintiff produced wines under the Marilyn Monroe brand and had done so since 1987. Monroe’s estate licensed plaintiff to use on its wines the registered trademark “Marilyn Monroe,” as well as common law trademarks for her name, image and likeness. Plaintiff utilized this license to use photographs of Monroe on its bottles and had done so for 20 years. The suit involved the winery’s “Velvet Collection,” a limited edition wine “featuring historic photo portraits of Marilyn Monroe with the first ever ‘peel and peek’ label.” (The peak and peel was not a coy marketing device but rather the result of Tobacco Tax and Trade Bureau’s refusal to approve a label with a nude photograph of Monroe). The problem can quickly be seen in this more complete description by plaintiff of its collection:

A chance meeting in Hollywood between photographer Tom Kelley and an aspiring but unknown actress led to a two-hour photo session on May 27, 1949 that made history and established Marilyn Monroe as the ultimate sex symbol of the 20th century. The ten stunningly beautiful photographs from the historic session became known as the "Red Velvet" series, each one a portrait of Marilyn Monroe posing on a red velvet drape.

These images are now immortalized in the Velvet Collection wines. The most famous of the photographs appeared as the Centerfold of the inaugural edition of Playboy in 1953. That photo became the label of the 2003 vintage of the Velvet Collection, nearly all of which was destroyed in a warehouse fire shortly after the wine was released. By exclusive agreement with Playboy Enterprises, that historic photo portrait is now the label of The Velvet Collection 2004.

Kelley (and various entities under his control) had licensed the images to plaintff in 2004, but the license was eventually terminated, and eventually Kelley licensed defendant, who put out a wine with one of the photographs, which it marketed as part of its “Red Velvet Collection … ultra fine wines.” Plaintiff then sued for trademark infringement, trade dress infringement, unfair competition and passing off. Judge Patel’s decision was on plaintiff’s motion for a preliminary injunction.

One of defendant’s arguments was that as a licensee of the copyright owner on the photograph (Kelley), it couldn’t be sued for trade dress infringement merely by using the photograph. I think that’s correct, but Judge Patel disagreed:

Defendants assert that TKS owns copyrights in the Red Velvet Collection images, and plaintiff's trade dress interests cannot prevent TKS from licensing its copyrighted works to Adler Fels for the use on wine labels. This case therefore presents a conflict between two asserted intellectual property rights: Nova's trade dress and TKS's copyright. The issue is whether plaintiff's trade dress rights can prevent TKS from exploiting its copyright by licensing images for use on wine labels. While the parties cite to no cases addressing this specific intersection between copyright and trade dress, the Federal Circuit has found that service mark registration does not give the owner of the mark the right to infringe another's copyright. Boyle v. United States, 200 F.3d 1369, 1373 (Fed.Cir.2000). In Boyle, a copyright owner challenged the government's failure to cancel a competitor's service mark registration which, according to the copyright owner, effectively destroyed his copyright. Id. at 1372. Although the court declined to reach the issue on sovereign immunity grounds, the court noted that while a “grant of a service mark registration entitles the registrant to certain rights and privileges under the Trademark Act [citations], the right to infringe another's copyright is not one of those rights.” Id. at 1373. The court therefore held that, as a matter of law, “the government's issuance of a service mark registration ··· cannot be construed as either authorization or consent for it to infringe Boyle's copyright,” and that “possession of a service mark is not a defense to infringement of a valid copyright.” Id. at 1373-74. A complementary conclusion is that a valid copyright does not entitle the copyright holder to infringe another's trade dress rights. This is particularly true where, as here, the plaintiff's trade dress rights are considerably broader than the defendants' copyright interests at issue. Nova has developed a unique trade dress, over a substantial period of time, comprising the use of Marilyn Monroe's name and image on wine labels. The trade dress interest therefore covers all images of Marilyn Monroe used on wine labels. These rights are broader than TKS's copyright interests in the specific images comprising its Red Velvet Collection. Plaintiff's trade dress rights therefore entitle it to prevent TKS from exercising the narrow portion of its copyright interests consisting of licensing images of Marilyn Monroe for use on wine bottles.

Assuming defendant did not use other elements of plaintiff’s trade dress, how could this be correct? What would happen if Kelley had sued plaintiff for copyright infringement at the expiration of the license, would Judge Patel have held that there was no liability merely by virtue of defendant’s trade dress ownership? And, while Judge Patel seemed taken with her “complementary conclusion,” I’m not: the issue is not whether a copyright permits the owner thereof to infringe a trade dress, but rather whether a lawful use of a copyrighted photograph itself licensed by the owner of rights in the image can form the basis for a trade dress action where the trade dress consists of an unlicensed use of the copyright. Phrased that way, I think the answer is no: how can one have a valid trade dress in an unauthorized use of a copyrighted work?

I would have no problem if the defendant's use of the image in the copyrighted photograph exceeded the scope of the license from Monroe (that is, defendant had no right to market the photograph of Monroe's image on wine bottles, but only in stand alone photographic displays), therefore leading to a right of publicity claim by her estate, but I don't get how such a use could form the basis for a trade dress action by a third party. My good friend Marty Schwimmer of the Trademark Blog knows far more about these matters than I , though, and may well disagree.


Anonymous said...

I think copyright lawyers have a superiority complex (no offense -- it takes one to know one) born of the notion that the intellectual property protected by copyright is somehow more legitimate, more genuine, more objectively real than the concoctions of Madison Avenue.

To understand the interplay of copyright and trade dress, it helps to look past the legal rules to the economic stakes. The value of a copyrighted work is intrinsic to the work, and created entirely by the author of the work. The copyright regime assigns that value to its creator, and preserves and protects the author's resulting economic interest.

The value of a trademark or trade dress is not in the work, but in the public's association of the work with a product -- the good will generated by the quality of the product. The protected work, the trademark or trade dress, may contribute aesthetic value initially, but the value of the mark or trade dress -- the good will that it garners -- is ultimately contributed by the product. A great wine can make an ugly label valuable; but not even Marilyn Monroe can rescue a bad wine. The value created by the association of the trade dress and product is properly assigned to whomever combined them, and invariably that is the producer of the product (whether he also produced the work, or as in this case licensed it from someone else).

It might help for a copyright lawyer to think of the trade dress in Nova Wines as a derivative work. The creator of an authorized derivate owns the protectible economic interest in the derivative -- the separate copyright in the derivative. Thus if an author licensed someone to produce a movie based on his novel, and retained or reacquired the right to license someone else to make another movie, the second licensee could be held liable for infringement if he copied the derivative produced by the first licensee.

The other difference between the copyright and trademark legal regimes that compels the result in Nova Wines is that trade dress protection not only recognizes and preserves the economic interest of the producer of the product that generates the good will associated with the trade dress, it also protects the public interest. The defendant's use of the Monroe photographs to market the "Red Velvet Collection" of "ultra fine wines" is very likely to confuse consumers who associate the trade dress with plaintiff's Velvet Collection.

The trade dress might be associated with a phenomenal wine of a singular vintage that hit its full maturity, and a market price of $5,000/bottle just as the copyright owner's termination rights came up. Can the copyright owner terminate the license, and adopt the former licensee's trade dress for his own line of unexceptional wine? Even if the trade dress included the infringing, unauthorized use of a copyrighted photo from the outset, you can't let the copyright owner slap the same label on a rebottled Mogen-David.

William Patry said...

John, I freely confess to having a specialist's blinders, although I previously noted that if I couldn't be a copyright lawyer I would want to be a trade dress lawyer, a sentiment that may belie a slight superiority problem. I like the Marilyn case because it teases out differences between the two fields.

My uncertainty about the opinion comes from confusion about how it is that someone's trade dress could consist of an unauthorized use of another's copyrighted photograph.

Anonymous said...

Patel got it right and your question, with much respect, misses the point of the rights in trade dress held by the Plaintiff here. You ask how it is that someone's trade dress could consist of an unauthorized use of another's copyrighted photograph. But the trade dress rights consist of the use of any photographs of MM on a bottle of fine wine to the extent that the public might be confused as to the source and origin of other wines mimicking the Plaintiff's trade dress. Whether the photographs are authorized or unauthorized is not relevant with respect to the Defendant's infringement of the Plaintiff’s rights in its trade dress. Those rights in that trade dress were acquired by the Plaintiff (and not by the owner of the photographs) at a time when the use of the photographs was authorized. Plaintiff could now substitute other photographs and retain its trade dress interests to the exclusion of the Defendant's mimicry no matter what rights the Defendant obtained from the owner of the photographs. Presumably there is a way for the Defendant to use the licensed photograph even in association with the sale of wine without infringing the Plaintiff’s trade dress. You also suggest in the post that the trade dress might consist only of the content present in the photograph. That cannot be the case because the very nature of trade dress requires a use of content in conjunction with a sale of a product of some sort in commerce and either a direct affixation of the content or a very strong association of that content to that specific product. The trade dress rights are a composite of the content and the way in which the content is being used.

Does this limit the scope of the copyright in the photographs? No, not at all. The photograph can still be licensed to a wine seller under copyright but the wine seller cannot use it in a way that infringes another's trade dress. In the same fashion, a user can license the photograph of a celebrity under copyright but cannot use the photograph in a way that would infringe the celebrity's rights of publicity. The hard case on rights of publicity would be a celebrity self portrait licensed only under copyright.

William Patry said...

Josh, in the end, I don't think we disagree. I appreciate that the trade dress owner acquired rights during the termof the license and that those rights consist of the association of MM's image on a wine bottle.

You on the other hand state:

"Plaintiff could now substitute other photographs and retain its trade dress interests to the exclusion of the Defendant's mimicry no matter what rights the Defendant obtained from the owner of the photographs."

I agree with that too and I think you are implidly agreeing that in a suit for infringement by the copyright owner of the photograph against Nova, the copyright owner would prevail after the termination of the license. That would, as a practical matter, force the winery to substitute another image.

My difficulty with the case (obscured by the odd posture in which the issue was raised and my own lack of clarity) was a gleaning (rightly or not) from the Honorable MHP's opinon that in a suit by the photographer against the winery, the photographer would lose because the trade dress rights would be deemed superior.

Anonymous said...

Nova's rights to use Marilyn on wine were and are based on Anna Strasburg's claimed right of publicity. New York federal court has now ruled that the right of publicity died with Marilyn

U.S. District Court Judge McMahon found that at the time of her death in 1962, Monroe did not have any postmortem rights of publicity under the law of any relevant state, including California, where she died, and New York, which was purportedly her legal residence.

Patel may have no choice now.

Anonymous said...

Judge Patel's ruling extends to ANY photo of Marilyn, whether used previously or not, on a wine bottle.
This is overly broad.
It will never hold up -

Anonymous said...

California Judge Margaret Morrow sided with the Kelley and Greene in a summary judgment dated May 14, 2007, writing that “at the time of her death in 1962 Ms. Monroe did not have any postmortem right of publicity.”

This is the same ruling that federal Judge Colleen McMahon in New York granted to the Shaw collection earlier this month.

Anonymous said...

Marilyn Monroe is dead and so is her right of publicity.
Additionally, the trademark use(s) by MMLLC & CMG are stripped as well.

I resent the practice of going after the little guy. I think we need to find a better balance between the rights of the many and the privileges of the few.

Anonymous said...

For years, MMLLC has collected fees for the commercial use of Monroe’s likeness, on the grounds that it owns Monroe’s rights of publicity. Those commercial licensing fees are separate from (and in addition to) usage fees that licensees pay to the copyright holders of the images.
Nova Wines is a licensee of MMLLC.

In the lawsuit brought against 4 photograhers by MMLLC - Kelley is one of them and MMLLC and CMG has lost.

Judge Morrow (in California) and Judge McMahon’s (in New York) both ruled (and agreed) that because of the wording of her will, her rights of publicity ceased to exist at the time of her death and could not be transferred to heirs, beneficiaries or agents. This decision is simple and transparently clear.

Therefore, Nova Wines did not and does not have any exclusive rights as well.
Nova's side of the case is foredoomed.