C. BLORE & D. RICHMAN INC. v. 20/20 ADVERTISING
Decision Date | 08 December 1987 |
Docket Number | Civ. No. 4-87-501. |
Citation | 674 F. Supp. 671 |
Parties | CHUCK BLORE & DON RICHMAN, INCORPORATED, a California corporation, Plaintiff, v. 20/20 ADVERTISING INC., a Minnesota corporation, and Duling Optical Corporation, a Delaware corporation, Defendants. |
Court | U.S. District Court — District of Minnesota |
COPYRIGHT MATERIAL OMITTED
Earl D. Reiland, Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn., for plaintiff.
Brian E. O'Neill, Charles E. Steffey, Kristin A. Siegesmund, Faegre & Benson, Minneapolis, Minn., for defendant Duling Optical Corporation.
Michael F. Gallagher, Hopkins, Minn., for defendant 20/20 Advertising Inc.
This matter is before the Court on defendants' motion for summary judgment. Defendants' motion will be granted in part and denied in part.
Plaintiff Chuck Blore & Don Richman, Inc. (Blore) is a California advertising agency which designs and produces commercials for television, radio and other mediums. Defendant 20/20 Advertising (20/20) is a Minnesota advertising company also engaged in designing and producing such commercials. Defendant Duling Optical Corporation (Duling), a client of 20/20, is a Delaware corporation specializing in the sale of eyewear products and eyecare services. Duling is licensed to do business in Minnesota and conducts business there. This dispute arises over a series of television commercials produced by 20/20 for Duling featuring the actress Deborah Shelton, best known for her role in the television series "Dallas." Plaintiff contends these advertisements were substantially copied from a series of its copyrighted commercials that also feature Deborah Shelton. In addition, plaintiff alleges that defendants made an unauthorized copy of its copyrighted commercials to facilitate their production of their infringing commercials. The complaint has five counts alleging copyright infringement, violation of the Lanham Act, violations of the Minnesota Deceptive Trade Practices Act and Minnesota Unlawful Trade Practices Act and common law unfair competition. Jurisdiction is properly invoked under 28 U.S.C. § 1331, 1332 and 1338 and the doctrine of pendent jurisdiction.
In 1980 Blore designed and produced a television commercial using the actress Deborah Shelton and titled the work "Deborah." Complaint par. 14. Blore registered its Deborah commercial with the Copyright Office in 1981 receiving from the Registrar of Copyrights a Certificate of Registration No. Pa-134-443. In 1986 Blore produced six other Shelton commercials the first titled "Deborah-WSSL-Greenville," and the other five under the rubric "Deborah-Daily News" subsuming "Awards," "People Use the Daily News," "Features," "Neighbors" and "Bubble Bath." Blore alleges, and defendants have not denied, that it is the exclusive owner of the copyright of its seven "Deborah" commercials because it complied with all the relevant copyright laws. After the commencement of this action plaintiff registered the "Greenville" commercial separately, and the remaining five together.1 Amended Complaint Exhibits B and C.
In the summer of 1986 the principals at Duling Optical decided to change the direction of their advertising campaign. Duling had previously been running a series of television commercials involving non-celebrity individuals who sat on the set and spoke directly to the audience without music or props. Duling's advertising campaigns were coordinated by its marketing manager Michael Yager, who supervised the efforts of its advertiser 20/20. Yager worked closely with Connie Piepho, a 20/20 owner in deciding on the directions the new campaign should take.
Yager and Piepho decided to switch advertising strategies by using a celebrity spokesperson with "nice eyes" in its commercials. Yager Dep. 9, 20. From a list of nine celebrities Duling narrowed the choice to Shelton and one other actress. Yager Dep. at 26. The decision to employ Shelton was not finalized, however, until Yager had viewed a copy of plaintiff's copyrighted tape of Blore's "Deborah Daily-News" and showed it to Duling's president. Yager Dep. 29. 20/20 had specifically requested a copy of the tape from a talent agency and then delivered it to Yager. Yager Dep. at 27. Both Yager and Piepho admitted to making unauthorized copies of the Deborah Daily News tape. Yager Dep. at 130-33; Deposition of Connie Piepho 103. In a letter to the talent agency Duling stated that "the commercials we will be producing are similar to the Daily News commercials, which, by the way, were excellent." Affidavit of Earl Reiland, Exhibit A, Letter of Tom Kirpatrick to William Morris Agency (Kirpatrick Letter). The director chosen to create the Duling commercials featuring Shelton was given a copy of the unauthorized tape to watch and viewed it on the day of the shoot. Piepho Dep. 48, 72-73, 100-102.
The number of commercials involved in this litigation (seven Blore commercials and four Duling commercials) precludes indepth description of each one. All of the Blore commercials involved are approximately twenty-five to thirty seconds long and feature Shelton extolling the virtues of a newspaper and a radio station respectively. The Duling commercials are of similar length but involve eyewear products. Only two will be described below.2 The Blore commercial features Shelton extolling a newspaper (the Daily News). The opening shot is a close-up of Shelton in which the word "Deborah" appears on the lower left of the screen. The remainder of the commercial consists of a series of rapid-edits of twenty close-ups of Shelton's face against a green background.3 In each commercial she is wearing an unbuttoned white shirt with blue stripes. With each line of text the camera cuts to a new close-up of Shelton in a different pose, with a different hairstyle and a different expression. The script is as follows with each line accompanied by a different shot:
Blore Daily News Script What do the Daily News and a hot bubble bath have in common? Me I just love them both. Everybody knows about the Daily News' commitment to the Valley And its commitment to excellence. There is another paper that says it covers the Valley But everybody knows They're over the hill. Can you imagine living in the Valley and not reading the Daily News? That's like wearing all new underwear and not getting hit by a bus. What a waste. Daily News. Daily And Sundays. You Ought to look into that.
The Duling commercial is thirty seconds long and contains fourteen different poses of Shelton. It also begins with a close-up and the words Deborah Shelton on the lower right of the screen. Most of the shots are close-ups but some are medium shots in which her upper body is also visible. She wears a blue-striped blouse that is alternatively unbuttoned and buttoned. With each shot she is featured in a new pose with a different pair of glasses or no glasses at all as well as a different hairstyle. The text of the representative Duling commercial is as follows:
There are some things in life that should take more than an hour. But making your glasses isn't one of them. Duling Optical Super Store Has thousands of designer frames And contact lenses to choose from. I can have my eyes examined And have my new glasses and Contact lenses in about an hour. And they're guaranteed to be Prescription perfect. The Duling Optical Super Store The one-stop shopping That allows me more time for Other things.
It is undisputed that the text and subject matter of the Duling commercials are completely different from those of the Blore commercials. Plaintiff contends that despite these differences the producers of the Duling commercials have substantially copied the expressive elements of the Blore commercials. In particular they allege substantial similarity in regards to editing, change of hairstyle, framing, collar position on blouse and use of a striped blouse, jewelry, tone of voice, raising of eyebrows and voice level. For their part defendants argue this suit is a frivolous attempt by plaintiffs to monopolize the use of a rapid-edit montage style involving closeups of Deborah Shelton despite the absence of any exclusive licensing agreement between Shelton and plaintiff. They further contend that neither the use of Shelton as the sole spokeswoman for a particular product, nor the use of rapid-edit close-ups are entitled to protection under either copyright, Lanham Act or unfair competition laws. Defendants also move to dismiss the remaining counts of the complaint.
To establish a claim of copyright infringement plaintiff must prove both the ownership of a valid copyright and copying by the defendant. Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 120 (8th Cir. 1987); Warner Bros., Inc. v. American Broadcasting Cos., Inc., 654 F.2d 204, 207 (2d Cir.1981); 3 Nimmer on Copyright (Nimmer) § 13.01 (1986). It is undisputed that plaintiff has valid copyrights for its commercials. Copying can be proved by a showing of access to the copyrighted material by the defendant and a substantial similarity between the protectible elements of the two works. Hartman, at 120; Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, ___ U.S. ___, 106 S.Ct. 2778, 90 L.Ed.2d 721 (1986). Accordingly, a distinction must be drawn between non-infringing copying wherein the substantial similarities relate only to nonprotectible elements, and infringing "illicit" copying where the substantial similarities relate to protectible elements. Walker, 784 F.2d at 48.
Here there is no question as to access since defendant Duling expressly indicated its intention to model its commercials after the Blore commercials and the Duling director viewed them on the day of the shoot. See Kirpatrick Letter; Piepho Dep. at 100-02. The issue is whether and to what extent the non-textual aspects of plaintiff...
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