Category Archives: Copyrights

Mattel Wins Copyright Case Brought by Former “He-Man” Writer

Mattel Inc. has won summary judgment in a case involving a former freelance writer of “He-Man” mini comics.

In 1981, Mattel engaged Donald Glut to create the backstory for Mattel’s “Masters of the Universe” toy characters, including “He-Man.” Ultimately, Glut prepared a written treatment and four “mini-comics” that related and expanded upon the backstory.

In 2013, Glut’s lawyer notified Mattel that Glut owned the copyright in the treatment and that Glut intended to terminate Mattel’s “implied license” to it. Mattel then preemptively sued Glut seeking a judicial declaration that Mattel, not Glut, owned the copyright in the treatment and that Glut waited too long to assert his alleged rights.

The gist of Mattel’s suit was that Glut was hired to create the treatment under a “work-for-hire” contract and that he was barred from claiming otherwise more than 30 years after the fact.

According to the US Copyright Office, a “work-for-hire” is:

a work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned in certain specified circumstances. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author. 

Mattel also asserted that Glut’s work on the treatment gave him no rights in the underlying intellectual property associated with the toys.

Glut claimed that he had licensed the Masters of the Universe rights to Mattel and that he intended to terminate his “license” in 2016.

Mattel asserted that Glut’s claim was barred by the doctrine of laches, a defense that prevents plaintiffs from “sleeping” on their rights to the detriment of defendants.

During the period from 1981 until Glut began to assert his claim, Mattel said that it had developed the toy franchise based on the assumption that Glut had no intellectual property ownership interests to assert.

Glut had filed his own summary judgment motion in November, claiming that Mattel was unable to produce the original work-for-hire documents. This motion was mooted by the court’s ruling.

Mattel has licensed the rights to the Master of the Universe toy line to Sony Pictures, which is reportedly planning to create a new film franchise based on the characters.

If you are concerned about whether your company’s agreements with freelancers are sufficient to protect your interests in their work, contact our office to arrange a free initial consultation with one of our copyright attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

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Photo Attribution: “He-Man cosplayer at the 2012 Phoenix Comicon in Phoenix, Arizona.” By Gage Skidmore is licensed under CC BY 2.0.


Bloomberg’s Use of Recording of Swatch Earnings Call Was Fair Use

The Second Circuit Court of Appeals has ruled that Bloomberg’s unauthorized publication of a recording of an earnings call was fair use under UScopyright law.

The case involved an earnings call for the Swatch Group, the watch company, which is traded on the Swiss stock exchange.

In February of 2011, Swatch hosted a telephone conference and invited hundreds of securities analysts to discuss the company’s financial performance.  Swatch arranged with a third party transcript service to record the call.

Swatch asserted that the recording was “an original work fixed in a tangible medium” and thus that it qualified for copyright protection. The company registered the recording with the US Copyright Office.

Bloomberg obtained an unauthorized copy of the recording and made it available via its news service.  Swatch asked Bloomberg to remove the recording.  When Bloomberg refused, Swatch sued for copyright infringement.

A district court granted summary judgment for Bloomberg, finding fair use as a matter of law.

The Second Circuit affirmed, finding that the first fair use factor – “the purpose and character of the use” – favored Bloomberg.

The court accepted that Bloomberg was a “commercial enterprise” providing information to paying users, and that it had obtained the recording using “clandestine methods.”  The court held that whether or not Bloomberg’s service was providing “news” or something else, publishing the Swatch recording provided an important public service in disseminating “newsworthy financial information.”

Although Bloomberg had obtained the recording without Swatch’s authorization, the court held that dissemination of information “would be crippled if the news media and similar organizations were limited to authorized sources of information.”

The court also held that Swatch’s copyright interest in the recording was “thin,” given its factual nature.

The court noted that Bloomberg’s publication of the call did not deprive Swatch of any revenue.  Bloomberg merely “widened the audience of the call, which [was] consistent with Swatch Group’s initial purpose.”

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Court of Appeals Affirms Summary Judgment in Expendables Copyright Case

The US Court of Appeals for the Second Circuit has affirmed the order of a federal district court granting summary judgment for the defendants, including Sylvester Stallone, in a copyright infringement claim related to The Expendables movie.

Marcus Webb is a corporate communications professional and an amateur screenwriter who wrote a screenplay in 2006 called The Cordoba Caper.  The plot involved an elite team of American mercenaries who are hired to defeat a Latin American dictator named General Garza.

Professional screenwriter David Callaham (DoomHorsemen) had a “blind” deal with Warner Brothers, and in late 2003 or early 2004 he suggested to the studio that he write a script about American mercenaries taking on a foreign dictator.  He sent Warner the first draft of his script, entitled Barrow, in 2005.

In 2008, Stallone told his agents that he wanted to do an action ensemble film.  He read the Barrow script, which he assumed came through his agents.  He then began writing his own script, eventually called The Expendables.

Although Stallone said that he set Barrow aside and didn’t “use one word of it” in his own script, the Writer’s Guild later awarded Callaham a “story by” credit and a joint “screenplay by” credit.

The film version of The Expendables script earned $274 million worldwide on an estimated budget of $80 million and has spawned one sequel so far, with more in the works.

After the film version of The Expendables was released in 2010, Webb sued Stallone, Callaham, and the various entertainment companies involved in the production including Lions Gate Films, alleging copyright infringement.

In 2012, the US District Court for the Southern District of New York granted Stallone’s motion for summary judgment.

To establish copyright infringement, a plaintiff must prove:

  • Ownership of a valid copyright, and
  • Copying of the constituent elements of the work that are original.

The second element has two requirements:

  • Actual copying, and
  • Improper appropriation.

Copying may be shown by direct evidence or by indirect evidence, including access to the copyrighted work, similarities between the works that are probative of copying, and expert testimony.

The defendants contended that Webb could not establish copying because:

  • Barrow was written before Cordoba,
  • Webb could not show that Stallone had access to Cordoba when he wrote The Expendables, and
  • There were no similarities between the two scripts sufficient to prove copying.

Webb claimed that Stallone had access to his work on the basis that Webb had submitted his script to eight screenplay contests that employ staff and judges with contacts in the movie industry.  However, Webb introduced no evidence that anyone who worked for Stallone had any connection with the contests.

The court concluded that no reasonable juror could conclude that the two scripts were so similar as to preclude the possibility of independent creation.

On appeal, the Second Circuit affirmed the dismissal on the grounds that the two works were not substantially similar.  According to the court, The Expendables was a “gunfire-riddled ‘pure action’ flick,” while Cordoba was a “trickery-based true caper.”

The judge seemed to like the Cordoba script better, noting that it had

…sensitive and human characters, female figures who are independent and capable, and imagery that includes Mayan villages, horseback riding through the Andes Mountains, and Native American ceremonial costumes, food, and music.

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Musicians Oppose Changes in Copyright Laws to Make Sampling Easier

Aerosmith lead singer Steve Tyler has spoken out against a proposed change in US copyright law that would require musicians to let others create derivative works of their songs.

These derivative works would include samples, mash-ups, and remixes.

Unauthorized sampling is common in the music industry.  Record Label TufAmerica Inc. recently filed a copyright infringement lawsuit claiming that FrankOcean’s “Super Rich Kids” included an unauthorized sample of Mary J. Blige’s 1992 song “Real Love.”

TufAmerica does not own the Blige song, but it does own a 1973 song “Impeach the President” that Blige samples in her song.

Tyler’s comments, along with those of his attorney, were submitted in response to a request in a US Department of Commerce green paper on copyright policy.

One of the changes suggested was the creation of a compulsory license that would allow musicians to remix the works of others by paying a flat fee.  Cover versions of songs are now handled in this manner.

Tyler said that such a compulsory license would force artists to allow their music (or other works) to be associated with messages and causes that the artist objects to.  He said the compulsory license might allow someone to use a sample of music by Melissa Etheridge (a lesbian) in a song containing homophobic slurs, or could allow someone to use a song by gun-ownership-advocate Ted Nugent in a work promoting gun control.

Other musicians opposing the change include Deadmau5, Don Henley, Sting, and Joe Walsh.

The green paper resulted from hearings in May in the House Judiciary Committee’s intellectual property subcommittee to consider the modernization of US copyright law in the wake of technological advances in computers and digital media.

The last extensive revisions of US copyright law were in 1976, before the advent of the Internet and the PC.  Subsequent amendments have been piecemeal, including the Digital Millennium Copyright Act of 1998, which focused on digital rights management, anti-circumvention, and “safe havens” for Internet service providers.

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Ninth Circuit Revives Copyright and Trademark Claims by Heirs of Bill Graham

The Ninth Circuit has revived a case involving copyrights and trademarks associated with the late Bill Graham.

Graham, who was born in Berlin, escaped Germany and France during the Second World War and lived as a foster child in the Bronx.  He moved to San Francisco in the early 1960s and got his start as a promoter by organizing a benefit.

He presented concerts at the Fillmore Theater in San Francisco and worked with performers including Jefferson Airplane, the Rolling Stones, and the Grateful Dead.

He died in 1991 in a helicopter crash near Vallejo, California, on his way home from a Huey Lewis and the News concert.

His will created trusts for his sons, who were 14 and 23 at the time of his death.  The executor of the will and the trustee was Nicholas Clainos, Grahams’s friend and business partner.

In 2010, 15 years after the probate court had made the final disposition of Graham’s estate, Graham’s sons sued Clainos, his attorneys, and the Bill Graham Archives.  Graham’s sons claimed that they had been cheated out of hundreds of valuable rock concert posters and the copyrights associated with those posters.

Graham’s sons also claimed that Clainos and his attorney had “concealed and converted” the rights to “The Fillmore” trademark.

Graham’s sons claim Clainos and his attorney had assigned the poster rights to a new subsidiary of Bill Graham Presents in a document dated August 31, 1995, and then backdated that document to August 1, before the probate case closed.  Clainos became the subsidiary’s largest shareholder, according to the complaint.

A federal district court dismissed the claim against Clainos but the Ninth Circuit reversed and remanded, holding that the plaintiffs had pled facts sufficient to show that assignment was not effective and thus that they had a legitimate claim to the copyrights for the posters.

Some of the concert posters, including the one above, were published without copyright notices before 1977 and thus are now in the public domain.

For works created after January 1, 1978, copyright protection lasts for the life of the author plus 70 years.  Thus, an author or artist can bequeath copyrights (and the associated royalty streams) to his or her heirs after death.

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US House of Representatives Considers Copyright Protection for Standards

The House Judiciary’s Subcommittee on Courts, Intellectual Property and the Internet held hearings on whether privately developed safety standards later adopted as law can be protected by copyright.

Private organization such as the American National Standards Institute (ANSI) develop voluntary consensus standards for products and services in the United States, and coordinate US standards with foreign standards so that US products can be used all over the world.

The federal government often applies these voluntary standards in laws and regulations, as do local and state governments.

Some standards organizations have sought to exercise control over their standards under copyright law, even after the standards become part of the law.

Works of the US government, as well as those of state and local governments, are excluded from copyright protection and are in the public domain.  Building codes, for example, are in the public domain and may be freely copied by anyone.

At the recent hearing, the general counsel for ANSI noted that industry groups spend time and money to create complex systems of standards and that they would be unable to continue making this investment without the ability to charge for this content.

“If the government were to take that process away,” she said, “the government would have to provide that expertise … and ultimately the taxpayers would have to pay for that.”

The founder of Public.Resource.Org, a non-profit group that favors free online access to legal codes, testified that charging for access to laws was contrary to “a fundamental principal of our democracy.”

He said, “That the law has no copyright because it’s owned by the people is a principal that has been repeatedly reaffirmed by the courts.”

California Congresspeople Darrell Issa and Zoe Lofgren expressed their concern that citizens should have free access to the laws that they must live under.

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9th Circuit Tells YouTube to Remove Anti-Muslim Film Based on Copyright Violation

The 9th Circuit Court of Appeals ordered (owned by Google) to remove the 14-minute film trailer The Innocence of Muslims from its site.

The Court of Appeals reversed a decision by a federal district court that denied an injunction sought by Cindy Lee Garcia, an actress who appeared in the film for only about five seconds.

Garcia had sued YouTube, Google, and Naloula Basseley Nakoula, the film’s producer, among others.

Garcia had been cast in a minor role in a film with the working title Desert Warrior, a historical adventure with no religious content.  She received $500 for three-and-a-half days of work.

However, Desert Warrior was never released.  Instead, Garcia’s performance was used in a trailer for The Innocence of Muslims.  (A full-length film by that name apparently does not exist.)

Garcia learned how her performance had been used when the trailer was uploaded to YouTube.  Her lines had been partially dubbed over so that she appeared to be asking a question highly offensive to Muslims.

When Egyptian television aired segments of the trailer in 2012, violent protests broke out in several countries in the Middle East and Northern Africa, leading to dozens of deaths.  Garcia began receiving death threats after an Egyptian cleric called for the death of anyone associated with the film.

According to Judge Alex Kozinski of the 9th circuit, “While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa.”

Kozinski wrote that Garcia was duped into providing a performance that was used in ways she could not have foreseen, leading to threats against her life.

The 9th Circuit held that the filmmakers had likely exceeded any implied license to use Garcia’s performance.

Google argued that Garcia’s “didn’t make a protectable contribution to the film” that would allow her to make a copyright infringement claim.  Google noted that Nakoula wrote the dialogue that Garcia spoke, managed the production, and dubbed over Garcia’s scene.

YouTube and Google contended that granting Garcia’s request for an injunction before deciding whether Garcia actually had a protectable copyright interest in the film was an unconstitutional prior restraint on freedom of speech.

The 9th Circuit responded that the First Amendment does not protect copyright infringement.

The district court had ruled that Garcia could not claim to be an author of the film and thus could not establish copyright ownership.  One member of the three-judge Circuit Court panel agreed, saying that Garcia’s performance was not a “work” protected by copyright law and that she was not an “author” of the film.  The two other judges on the panel disagreed.

Although Garcia only asked for her own performance to be removed from the trailer, the 9th Circuit ordered the entire trailer taken down.

Google issued a statement that it strongly disagreed with the ruling and would fight it.

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