Opinion
00 Civ. 158(GBD)
October 15, 2003
MEMORANDUM OPINION AND ORDER
Plaintiff Sandra Kane filed this action in connection with the unauthorized use of a clip of her public access television program, "The Sandy Kane Blew Comedy Show," by a cable television program called, "The Daily Show." The complaint alleges claims of copyright infringement, trademark infringement, unfair competition, and related New York statutory violations. Plaintiff thereafter amended her complaint to include a claim of defamation. Defendants filed a motion to dismiss the complaint or, in the alternative, for summary judgment. Defendant's motion for summary judgment is granted in its entirety.
Except where noted, the following facts are not in dispute. Plaintiff is a comedienne and former stripper. Since 1995, she has hosted her own show on public access television in which she sings, dances, and delivers explicit jokes while wearing little to no clothing. Plaintiff has a registered copyright in the name of "The Sandy Kane Comedy Show!" issued on August 25, 1999. She also has a registered servicemark for her show, dated July 6, 1999, which includes the title, "The Sandy Kane T.V. Show."
The Daily Show" appears nightly on Comedy Central, a national cable television network. The half-hour show mimics the format of a news program and analyzes current events from a comic and satirical perspective. Comedy Central is owned by defendant Comedy Partners, which, in turn, is owned by a partnership in which defendant Viacom, through a wholly-owned subsidiary, is a general partner.
On or about December 1998. an employee of "The Daily Show" contacted plaintiff and informed her that "The Daily Show" intended to use a portion of her show. According to plaintiffs complaint, the employee explained that plaintiff would not be compensated because copyright protection did not apply to public access television. Plaintiff did not consent to the use of her show.
Plaintiff subsequently learned that "The Daily Show" was using a clip of her show to introduce a segment called. "Public Excess." In the example submitted to this Court, the host of the show, Jon Stewart. introduces the segment by saying, "They say that some of the best shows on television are on public access. If you happen to see any, please let us know. Until then, here is Rich Brown with Public Excess." The segment opens with a full-screen image from the Kane show, showing plaintiff dancing in a bikini. The title, "The Sandy Kane T.V. Show," can be seen in the background of the dip as it originally appeared. The full-screen image remains on the screen for less than a second and then shrinks to the lower left corner to make room for three other clips which form a square video collage. Throughout this introduction, the words "Public Excess" flash across the screen accompanied by music. The entire introduction lasts six seconds. Plaintiffs show, from which the clip was taken, runs about half an hour long.
An even shorter portion of the same clip of "The Sandy Kane Show" is used in a commercial, promoting the "The Daily Show." That commercial contains clips from various segments of "The Daily Show" as an announcer promises, "The Daily Show: comprehensive, extensive, offensive." The announcer hits the word "offensive" in conjunction with the appearance of the half-second clip from "The Sandy Kane Show."
The "Public Excess" segment mocks various public access programs by presenting and commenting on clips of those shows. One "Public Excess" segment included a clip of plaintiffs show in the body of the piece. Rich Brown, a member of "The Daily Show," introduced the clip by saying, "How about a little cheesecake with Sandy Kane." The clip shows plaintiff dancing in a bikini while singing the song, "I Love Dick." According to plaintiff, this is the signature song by which fans recognize her. It was from this clip that the shorter clips for the introduction and the commercial were taken, although the song is inaudible in these shorter clips.
In her lawsuit, plaintiff complains only of the clips used in the introduction to the "Public Excess" segment and in the commercial promoting "The Daily Show." She does not specifically challenge the use of her clip in the body of the "Public Excess" segment. In fact, on line 13 of her Amended Complaint, plaintiff incorrectly states, "On information and belief, Plaintiffs show was never the subject of coverage or parody on Public Excess, outside of its use in the promos of the show." Thus, plaintiffs lawsuit concerns only the permissibility of using her work in the introduction and the commercial.
Although plaintiff does not specifically challenge the use of her clip in the body of the "Public Excess" section, a consideration that use would not change this Court's analysis and determination of this motion.
Plaintiff filed her lawsuit, and amended her complaint, pro se. Defendants then moved to dismiss or, alternatively, for summary judgment. This Court responded to plaintiffs request for counsel by submitting her case to the Pro Bono Panel. Counsel from the law firm of Milbank, Tweed, Hadley, McCloy, LLP. filed a notice of appearance as pro bono counsel pursuant to that order and subsequently filed a memorandum on plaintiffs behalf in opposition to defendant's Motion. The Court heard oral argument by counsel on defendant's motion.
Defendants alternatively move to dismiss the action for failure to state a claim pursuant to Fed.R.Civ.P. 12(b)(6), or for failure to raise a genuine issue of fact pursuant to Fed.R.Civ.P. 56. As the parties have submitted affidavits and exhibits in support of their memoranda, the Court treats the entire application as a motion for summary judgment according to Fed.R.Civ.P. 12(c).
Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); Nebraska v. Wyoming. 507 U.S. 584, 590, 113 S.Ct. 1689, 1694 (1993). The burden of demonstrating that no factual dispute exists is on the moving party. Celotex Corp. v. Catrett 477 U.S. 317, 323 (1986). Once the moving party has met this burden, the nonmoving party "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). In deciding a motion for summary judgment, a court must resolve all ambiguities and draw all reasonable inferences in favor of the party opposing the motion.Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Summary judgment should be granted only when no reasonable trier of fact could find in favor of the nonmoving party. Taggart v. Time Inc., 924 F.2d 43, 46 (2d Cir. 1991).
COPYRIGHT INFRINGEMENT
Plaintiffs first and primary claim is based on copyright infringement. In their Motion, defendants argue that their use of plaintiff s material was a fair use, pursuant to 17 U.S.C. § 107. That statute provides that the use or reproduction of a copyrighted work is "not an infringement of copyright" if it is used "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." In determining whether the work has been used for such a purpose, the statute lists four nonexclusive factors to consider: 1) the purpose and character of the use, 2) the nature of the copyrighted work, 3) the amount and substantiality of the portion used, and 4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107(1)-(4). Though recognizing that fair use is a "mixed question of law and fact." courts regularly resolve fair use issues at the summary judgment stage where there are no genuine issues of material fact. Castle Rock Entertainment, Inc. v. Carol Publishing Group. Inc. 150 F.3d 132, 136 (2d. Cir. 1998).Before considering these factors in detail, it is important to note that an advertisement which uses a copyrighted work "does not necessarily infringe that copyright if the product that it advertises constitutes a fair use of the copyrighted work." Steinberg v. Columbia-Delphi Productions, 663 F. Supp. 706, 714 (S.D.N.Y. 1987) (citing Warner Bros, v. American Broadcasting Cos., 720 F.2d 231, 242-44 (2d. Cir. 1983)). Moreover, an advertisement may itself constitute a fair use.Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998) (finding a poster of a pregnant Leslie Nielson, used to advertise "Naked Gun 33 1/3," to be a fair use of the photograph of Demi Moore it parodied).
The first factor, the purpose and character of the use of the copyrighted work, includes "whether such use is of a commercial nature or is for nonprofit educational purposes . . ." 17 U.S.C. § 107(1). In general, commercial use of the work will "weigh against a finding of fair use," and use of the original work for advertising purposes may entitle the copying work to even "less indulgence under the first factor of the fair use inquiry than the sale of the parody for its own sake."Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 585 (1994): see also Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113 (2d Cir. 1998). However, the Supreme Court has discounted the force of commerciality in applying a fair use analysis, noting "no man but a blockhead ever wrote, except for money." Campbell 510 U.S. at 584. The fact that the secondary use was intended for profit is, therefore, not determinative.
More important to analyzing the first factor is whether the use of the original work is "transformative" in nature, i.e., whether the copying work merely supplants the original or "instead adds something new, with a further purpose or different character, altering the first with new expression, meaning or message." Campbell 510 U.S. at 579.
One such transformative use that is typically found to be a fair use is a parody. A parody is characterized by an attempt to mimic an original, expressive, and usually famous work. See Campbell 510 U.S. at 586 ("parodies invariably copy publicly known, expressive works"). Defendants argue that their use of plaintiff s clip is properly analyzed as a parody merely because of the underlying format of "The Daily Show," which mimics news programs. However, unlike a parody, the use of plaintiff s clip in this case did not involve an altered imitation of a famous work but the presentation of an obscure, original work in a mocking context. The only similarity between a parody and the work at issue in this case is the element of ridicule.
Nevertheless, it is precisely this common element of ridicule that matters to an analysis of the first factor of the fair use inquiry. The only significance of deeming a work a parody is the concomitant determination that the work contains elements of commentary and criticism: "For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments, on that author's works." Campbell 510 U.S. at 580 (emphasis added). Defendants acknowledge this in their reply memorandum and stress that the important, if not dispositive, issue is whether their use of plaintiff s material amounted to comment or criticism.
By airing plaintiffs clip in a segment called "Public Excess" and adding some derisive commentary, defendants unquestionably used her material for the purpose of criticism. This is most obvious when the clip appears in the body of the show in a succession of other public access clips, accompanied by Mr. Brown's smirking commentary. The critical nature of the use is also apparent in the introduction of the segment by virtue of the host's initial remarks and its title, "Public Excess.' Finally, the use of the clip on a commercial for "The Daily Show," coinciding with the announcer's warning that some material on the show may be "offensive," puts the clip into a critical context. The crux of the show, which airs on Comedy Central, concerns itself with ridicule. Virtually any clip appearing on this show is implicitly accompanied by a comment on its absurdity. Even if the element of ridicule is not readily apparent in the commercial, its use in the commercial is incidental to its fair use in the introduction and body of the "Public Excess" segment.See Steinberg, 663 F. Supp. at 714 ("the fact that the advertisement uses elements of the copyrighted work does not necessarily mean that it infringes the copyright, if the product that it advertises constitutes fair use of the copyrighted work").
This is not a case in which defendants attempted to usurp plaintiffs material in order to "avoid the drudgery in working up something fresh."Campbell 510 U.S. at 580. Rather, in presenting plaintiffs clip, defendants sought to critically examine the quality of plaintiff s public access television show. Thus, the first factor of the fair use inquiry, purpose and character of the use, strongly favors defendants.
The second factor, the nature of the copyrighted work, relates to whether the original work is "'creative' as opposed to 'factual,' as well as to whether the work has been previously published." Feiner v. H.R. Industries. 10 F. Supp.2d 310. 314 (S.D.N.Y. 1998). An original work which is creative in nature will generally receive greater copyright protection. See e.g. Ringgold v. Black Entertainment Television. Inc., 126 F.3d 70. SO (2d. Cir. 1997) (noting that second factor weighed in favor of plaintiff-painter because of the "creative nature of the work"). A previously published work available to the general public will receive less protection under the fair use doctrine than an unpublished work which has not yet been released to the general public by its author. Feiner. 10 F. Supp.2d at 314; Arica Institute. Inc. v. Palmer, 970 F.2d 1067, 1078 (2d Cir. 1992).
The creative nature of plaintiffs television show places the show in the "core of intended copyright protection" and thus would be a more important consideration than the fact that it had previously aired.Campbell 510 U.S. at 586. Although this seems to favor plaintiff, courts have recognized that "this factor may be of less (or even of no) importance when assessed in the context of certain transformative uses." Castle Rock Entertainment. Inc. v. Carol Publishing Group. Inc., 159 F.3d 132, 144 (2d Cir. 1998). In particular, this factor would never allow fair uses which advance science and art through criticism of or commentary on a creative work See e.g. Campbell 510 U.S. at 586 (finding second factor unlikely to "help in separating the fair use sheep from the infringing goats in a parody case"). Thus, if this factor favors plaintiff, it is without much force.
The third factor in the fair use inquiry considers "whether 'the amount and substantiality of the portion used in relation to the copyrighted work as a whole', are reasonable in relation to the purpose of the copying." Campbell 510 U.S. at 586. In addition to asking how much of the original work is used, this factor asks whether the borrowed material forms the "heart" of the original work. Harper Row Publishers. Inc. v. Nation Enterprises. 471 U.S. 539, 565-66 (1985) (finding that third factor weighed against fair use despite "insubstantial portion" used because quotes used in article were manuscript's "dramatic focal points").
As it relates to this lawsuit, defendants use of plaintiff s clip amounted to two seconds of plaintiffs twenty-nine minute show. This is only one-tenth of one percent of plaintiff s television show. Plaintiff attempts to argue that the amount is great because the clip was used a great number of times in the introduction to the "Public Excess" segment and in the commercial for "The Daily Show." This argument misunderstands the substantiality factor, which relates to the amount of the portion used in relation to the original, not the number of times it is shown.Campbell 510 U.S. at 586-87.
Plaintiff also argues that the portion used constitutes the "heart" of her show because it contains her signature song, "l Love Dick." Defendants dispute the importance of this song. The song can barely be heard in the six-second clip shown in the body of "Public Excess" and certainly cannot be heard in the introductory or promotional uses. In confirming that the substantiality factor includes a qualitative component, it is doubtful that the Supreme Court had such an example in mind inHarper Row, 471 U.S. at 566. Indeed, the Supreme Court later observed difficulty in applying this "heart" test to cases involving criticism or commentary. Campbell 510 U.S. at 588 (noting a parodist's need to refer to "the original's most distinctive or memorable features, which the parodist can be sure the audience will know"). Given this difficulty, the inaudibility of the song, and the infinitesimal portion of material used, the Court finds that this factor favors defendants.
The fourth factor measures "the effect of the use upon the potential market for or value of the copyrighted work." § 107(4). In assessing this factor, a court must consider "whether the secondary use usurps or substitutes for the market of the original work." Castle Rock, 150 F.3d at 145. Where the secondary work serves a fundamentally different function, such as to present an opposing viewpoint, there is little risk that the secondary work will supplant the original.Maxtone-Graham v. Burtchaell, 803 F.2d 1253. 1264 (2d Cir. 1986). Furthermore, the fourth factor does not take into account any diminished interest in the original work that results from the force of the critique. Campbell, 510 U.S. at 591-2 ("A lethal parody, like a scathing theater review, kills demand for the original but does not produce a harm cognizable under the Copyright Act").
Though both "The Sally Kane Blew Comedy Show" and "The Daily Show" may-serve a similar market for comedy, defendants use of plaintiff s material is highly unlikely to negatively affect the market for plaintiffs show. Even if the audience for both a satirical news program and a scantily clad singing dancer were identical, it cannot be credibly argued that defendants' use of two seconds of plaintiffs show in the introduction to "Public Excess" would have the effect of siphoning away demand for her comedy routine.
Plaintiff counters that the Court must also consider any effect defendants' use might have on plaintiffs ability to collect licensing fees from derivative works. She highlights the fact that another program, "World of Wonder," paid her $200 for a one-time use of a three-second clip of her program. Plaintiff is correct that the market for licensing the original work is relevant to the fourth factor, but the Court must be careful to avoid the danger of circularity inherent in such a consideration. The determination of whether the use is a fair use, and thus does not require a license, should not rest on whether such a determination would diminish the market for licenses of the original work. See Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 81 (2d. Cir. 1997). Yet it is only through such circularity that plaintiffs argument would have any force. Plaintiff is simply not entitled to licensing fees for uses of her work that otherwise qualify as fair uses. Leibovitz, 137 F.3d at 117; see also Twin Peaks v. Publications. 996 F.2d 1366, 1377 (2d Cir. 1993) ("[a] copyright holder's protection of its markets for derivative works of course cannot enable it to bar publication of works of comment, criticism or news reporting").
Finding it difficult to consider the market for licensing fees without engaging in circularity, the Court returns to the inescapable inference that fans of plaintiff s television show would not choose to watch 'The Daily Show" instead of "The Sandy Kane T.V. Show" because of defendant's use of plaintiff s clip. The Court, therefore, finds that the fourth factor-also favors defendants.
The four factors listed in section 107 are "non-exclusive and serve only as a guide to promote the purposes of the underlying copyright law."Castle Rock, 150 F.3d at 146. Although not listed among the factors, courts occasionally consider whether the defendant exercised good faith. See e.g. Fisher v. Dees, 794 F.2d 432, 436-37 (9th Cir. 1986) ("Because fair use presupposes good faith and fair dealing, courts may weigh the propriety of the defendant's conduct in the equitable balance of a fair use determination").
Plaintiff argues that by misleading her into believing that copyright law did not apply to public access television and using a clip of her show without consent, defendants exercised bad faith. However, even if, as plaintiff suggests, defendants intended to obtain plaintiffs consent by misleading her on the law, there is no evidence that plaintiff ever relied on such representations to her detriment. Indeed, the basis of plaintiff s complaint is that the use of her clip was completely unauthorized. (Amended Complt. ¶ 14). Moreover, defendants' efforts to contact plaintiff and inform her of their plan to use her show are evidence of defendants' good faith effort to initially seek her informed consent.
Nor is defendants' unauthorized use of plaintiff s television show itself evidence of bad faith. It is a rare exception that a work of criticism and commentary is authorized by the target artist. See e.g. Fisher, 794 F.2d at 436 ("Parodists will seldom get permission from those whose works are parodied . . . even in exchange for a reasonable fee"). Regardless, it is the question of whether authorization is required that the fair use inquiry intends to resolve.
There being no genuine issue of material fact with respect to any of the fair use factors, defendants' use of plaintiff s copyrighted material qualifies as non-infringing fair use under Section 107. Accordingly, the Court grants summary judgment in favor of defendants on plaintiffs copyright claims.
LANHAM ACT TRADEMARK INFRINGEMENT
Defendants' motion for summary judgment is also granted on plaintiffs Lanham Act claims. The Lanham Act claims are duplicative of plaintiff s copyright-based claim. Plaintiff has further failed to produce any evidence of "likelihood of confusion."Plaintiff alleges that defendants' televised display of the words, "The Sandy Kane Comedy T.V. Show" as it appeared in plaintiffs original show, amounted to violations of 15 U.S.C. § 114(1) and 1125(a). A critical element to any claim of trademark infringement is the "likelihood that an appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Hormel Foords Corp. v. Jim Henson Productions, 73 F.3d 497, 502 (2d Cir. 1996). A plaintiff who attempts to apply the Lanham Act to a copyright-based claim must "make a greater showing that the designation of origin was false, was harmful, and stemmed from 'some affirmative act whereby defendant falsely represented itself as the owner." Weber v. Geffen Records, Inc., 63 F. Supp.2d 458, 463 (S.D.N.Y. 1999) (quoting Lipton v. The Nature Co., 71 F.3d 464, 473-74 (2d Cir. 1995)).
A viewing of defendants' use of plaintiff s clip on "The Daily Show" gives no impression that the owner of the trademark, 'The Sandy Kane Comedy T.V. Show," or the source of the clip, was anyone other than plaintiff. A different conclusion would be unreasonable, notwithstanding plaintiffs assertion that some of her friends believed that she had become affiliated with "The Daily Show." Neither in the body of the "Public Excess" segment, the introduction, nor the commercial, do defendants make any attempt to pass the trademark off as their own. On the contrary, the narratives in all three instances make it clear that someone else's work is being displayed and ridiculed. As the Court of Appeals for the Tenth Circuit has observed, "the requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same as a 'right' not to be made fun of." Jordache v. Hogg Wyld, 828 F.2d 1482, 1486 (10th Cir. 1987). There is no genuine issue of material fact with respect to whether plaintiffs trademark has been infringed. Summary judgment is, therefore, granted on plaintiffs Lanham Act claims.
STATE LAW CLAIMS
Plaintiff also relies on several state claims relating to unfair competition, false advertising, deceptive business practices, and trademark dilution. Like a claim for federal trademark infringement, each of these claims requires an element of confusion or misrepresentation: 'The sine qua non for trademark infringement, dilution of trademark or unfair competition, is a showing by the plaintiff of the likelihood of confusion . . ." Berlitz Schools of Languages of America v. Everest House, 619 F.2d 211, 215 (2d. Cir. 1980). A claim based on § 133 of New York General Business law requires the additional showing of an "intent to deceive or mislead the public/'
Plaintiff fails to bring forth any evidence, other than her own assertions, that the audience for 'The Daily Show" is reasonably likely to be confused by the appearance of "The Sandy Kane Comedy T.V. Show" in the background of the clip. Nor is she able to sustain a reasonable inference that defendants intended to cause such confusion or deceive consumers. For the same reasons identified in the discussion of plaintiff s federal trademark claim, plaintiffs state claims for unfair competition, trademark dilution, false advertising, and deceptive trade practice cannot survive the summary judgment phase.
Plaintiff brings an additional state claim based on her right of privacy, pursuant to New York Civil Rights Law § 51. The statute provides a right to sue a "person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait, or picture of any living person without having first obtained the written consent of such person." N.Y. Civ. Rights Law § 50 (McKinney's 1988). The courts have narrowly interpreted the meanings of "advertising" and "trade" to apply only to commercial misappropriation and to exclude anything "newsworthy." Messenger v. Gruner Jahr Printing and Publishing, 94 N.Y.2d 436, 441 (N.Y. 2000). This "newsworthiness" exception is broadly construed and extends to "any subject of public interest," id. at 441, including "entertainment and amusement, concerning interesting phases of human activity in general." De Gregorio v. CBS, Inc., 123 Misc.2d 491, 493, 473, N.Y.S.2d 922, 924 (Sup.Ct. 1984). Courts have recognized an additional exception to section 51 for the "incidental use in ads or other promotional items of material that prove the worth and illustrate the content of the works being advertised." Groden v. Random House. Inc., 61 F.3d 1045, 1049 (2d Cir. 1995) (quoting Booth v. Curtis Publishing Co., 15 A.D.2d 343, 349 (1st Dep't 1962).
Defendants used plaintiffs name and picture without her consent. However, defendants did not do so primarily for advertising or trade purposes, as those terms are defined by the New York courts. Presenting and criticizing plaintiffs comedy routine falls within the "entertainment and amusement" branch of the newsworthy exception. See De Gregorio, 123 Misc.2d at 493. Furthermore, the use of her image and name in the commercial was clearly designed to illustrate the type of humor an audience member could expect from "The Daily Show" and was, therefore, an incidental use. Plaintiff has failed to raise a genuine issue of material fact with respect to her right of privacy claim.
Finally, plaintiff raises a claim for defamation relating to defendants' use of the word "offensive" as her clip appeared in the commercial. It is black letter law that an expression of opinion cannot be the subject of a defamation action because of the impossibility of proving it true or false. See, Held v. Pokornoy, 583 F. Supp. 1038, 1040 (S.D.N.Y. 1984). This rule applies with no less force to "rhetorical hyperbole" and "vigorous epithets." Id. Whether a statement is an expression of opinion or fact is a threshold matter of law for determination by the court. Levin v. McPhee, 119 F.3d 189, 196 (2d. Cir. 1997).
A reference to plaintiff and her show as "offensive" is a clearly protected expression of opinion which cannot be the subject of an action for defamation. Indeed, plaintiffs attorney declined to argue in support of this claim in his memorandum in opposition to defendant's motion. Consequently, plaintiffs claim for defamation must be dismissed.
CONCLUSION
For the foregoing reasons, defendants' Motion for Summary Judgment is granted in its entirety. Plaintiffs action is, hereby, dismissed.