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Neville and Doug Johnson Analyze More Interesting Entertainment Law Cases for the NYSBA (Winter 2020)

Posted by Johnson & Johnson, LLP | Dec 18, 2020 | 0 Comments

Interesting Cases, Part 3, and Resuming Production During COVID-19

New York State Bar Association - Entertainment, Arts and Sports Law Journal

Winter 2020

By Neville L. Johnson and Douglas L. Johnson

Interesting Cases, Part 3, and Resuming Production During COVID-19

Instagram Terms of Use Not a Free Pass

On June 24, 2020, Judge Kimba M. Wood of the United States District Court, Southern District of New York granted a photographer's motion for reconsideration of her copyright infringement claim against Mashable for using one of her photographs posted to Instagram without her permission.1 The order comes as a victory for users of social media platforms because it places a limit on how a user's posts can be used after being created on the social media platform.

The plaintiff in this case is a freelance photojournalist who maintains a public Instagram account to share her work, including the copyrighted photograph at issue.2 The defendants in this case are Ziff Davis, a digital media and advertising company, and Mashable, a media and entertainment website, which is owned by Ziff Davis.3
In March of 2016, an employee of Mashable requested permission from the plaintiff to use the photograph in
an article about female photographers.4 The plaintiff did not grant permission. However, Mashable proceeded to publish the photograph in the article on its website by using Instagram's application programming interface (API), which enables users to view and share content posted by other users whose accounts are set to “public.”5 The plaintiff then demanded for the photograph to be taken down, but the defendants refused to do so and this lawsuit ensued.6

Initially, the court granted the defendants' motion to dismiss on grounds that Instagram's terms of service, to which the plaintiff consented, had granted them a valid sublicense to embed and use the photograph.7 However, upon the plaintiff's submission of her motion to recon- sider, Judge Wood ruled in favor of the plaintiff, reason- ing that it was unclear whether Instagram's terms of service actually gave the defendants the right to embed the photograph in the article.8 Judge Wood also empha- sized that it was not obvious whether Instagram intended to grant parties such as Mashable a sublicense to embed photographs.9

Enola Holmes: Characters and Copyright

The estate of Sir Arthur Conan Doyle, who was the creator of Sherlock Holmes, sued Netflix for copyright infringement over an up- coming film, Enola Holmes.10 The film is based on a series of mystery novels
by Nancy Springer, which feature Sherlock Holmes' 14-year-old sister invented by Springer, Enola Holmes, as the main character.11 The author of the novels, her publisher, and the production company are also named as co-defendants.12 The novels feature elements from the Sherlock Holmes stories, many of which are no longer protected by copyright due to a number of court rulings in the early 2010s and because the period of protection had lapsed.13 Doyle's estate's complaint alleges, however, that the film draws key elements from those stories that are still protected, namely Holmes' character, which had eventually evolved into a kinder, warmer person who became respectful of women.14 The case is currently pending in the U.S. District Court of New Mexico.

Copyrighting characters is complicated, as human be- ings themselves are not considered copyrightable subject matter.15 However, a character can be protected by copy- right as part of a graphic or literary work.16 In order for this to occur, the character must be delineated, meaning that the character must be substantially developed such that the character is distinct from the plot.17 A character may be protected as a compilation of otherwise unpro- tectable character traits.18 Moreover, copyright protection is afforded to a component of a character if that compo- nent is what makes that character identifiable.19 The main issue when it comes to a copyrighted character is that if the work in which it is initially embedded falls into the public domain, so does the character, which makes it fair game for other authors to use the character without need- ing permission from the initial creator.20

Theft of Idea and Latest Copyright Law in the Ninth Circuit

Desny claims, i.e., theft of idea claims, are still alive and well in California. In order to prevail on a theft of idea case, the plaintiff must prove the existence of an implied-in-fact contract and a breach thereof by satisfying the following requirements: (1) Submission of the idea on an obligation to pay for use of the idea; (2) voluntary acceptance of the submission based on knowledge of the obligation to pay for the use of the idea; (3) use of the idea; and (4) damages.21 An interesting case (though un- published) that has arisen in the past few years is Sullivan v. Pure Flix.

In this case, Sullivan and Stine (the plaintiffs) pitched an idea to Pure Flix, a studio that specializes in Christian- themed films, through Stine's agent.22 The plaintiffs sent a first draft of a treatment to the defendants, which stated that the film was about a young Christian professor who finds out that there is a religious studies class on his campus in which the professor mocks God and prioritizes science over religion.23 The two professors debate, and the Christian professor wins.24 Pure Flix then hired screen- writers who wrote the script, entitled “Proof,” that was added to its list of prospective films.25 Unfortunately, Pure Flix was unable to secure financing for the film.26 Then, Pure Flix was pitched another film about apologetics27 on a college campus and ultimately produced that film, which contained the primary storyline about a Christian college freshman and an atheist philosophy professor who enter into a debate about God's existence.28 Upon finding out about the produced film, the plaintiffs sued for breach of implied and express contract.29

The trial court granted the defendants' motion for summary judgment and the plaintiffs appealed.30 On appeal, the court affirmed the motion for summary judgment with respect to Sullivan, stating that there was “insufficient evidence to support a breach of express or implied contract claim by Sullivan against White or Pure- flix, because Sullivan fail[ed] to raise an issue of material fact that he had any agreement with Pureflix.”31 However, the court reversed the lower court's decision with respect to Stine, because his portion of the complaint had raised a material issue of fact as to whether a breach of an implied or express contract had occurred.32 In its discussion on substantial similarity, the court distinguished theft of idea from copyright infringement and noted that since an idea need not be novel in order to be protected under California law,33 it was required to consider scènes-a-fair and pre-existing ideas34 in its analysis.35 In doing so,

the court concluded that there were enough similarities between the two stories in order for a jury to decide.36 Furthermore, the court also noted that there were enough facts on the record for a jury to decide whether to accept or reject Pure Flix's independent creation defense.37 The defendants attempted to appeal the decision with the  California Supreme Court in 2019, but their request for review was denied.38

The Ninth Circuit has been changing course in the field of copyright law. The most notable decision thus far came in March of 2020, with its ruling on Skidmore v. Led Zeppelin, the contentious copyright infringement lawsuit relating to the famous song Stairway to Heaven.39 Up for debate was whether Led Zeppelin's Stairway to Heaven was substantially similar to the plaintiff's song Taurus.40 The lower court's jury returned a verdict in favor of Led Zeppelin, stating that the songs were not substantially similar.41 On appeal, one of the main issues raised was the lower court's failure to give the jury instructions on the inverse ratio rule.42 The inverse ratio rule refers to the proposition that “powerful proof of access can substitute for demonstration of the requisite degree of substantial similarity” in a copyright infringement analysis.43 The Ninth Circuit, en banc, ultimately abrogated the inverse ratio rule, reasoning that it was not a part of the Copy- right Act, that it defied logic, and that it caused undue confusion for the courts and the parties.44 In doing so, the Ninth Circuit affirmed the lower court's finding that the two songs were not substantially similar.45

There have also been series of recent rulings from the Ninth Circuit Court of Appeals46 that, although previously known for siding with powerful companies on copyright issues,47 is changing course. In three rulings, the Ninth Circuit reversed district court decisions that had adjudicated substantial similarity on Rule 12 motions, ultimately granting the motions and tossing out the cases.48 In Zindel v. Fox Searchlight Pictures, a case in which the son of a playwright sued Fox Searchlight for allegedly infringing his father's play by the Oscar-winning film The Shape of Water and book of the same name, the court noted that although ruling as a matter of law is sometimes appropriate at the pleadings stage, summary judgment is not preferred on issues of substantial similarity.49 The court further stated that “[c]ourts must be just as cautious before dismissing a case for lack of substantial similarity on a motion to dismiss.”50

Similarly, in Alfred v. The Walt Disney Co., an infringement case regarding the film The Pirates of the Caribbean: Curse of the Black Pearl, the Ninth Circuit reversed a lower court's decision granting Disney's motion to dismiss

due to the fact that the lower court had given too much weight to Disney's scènes -a-faire argument.51 The Ninth Circuit, while admitting that the two works at issue shared similar pirate-movie tropes, stated that, “at this stage of the litigation, it is difficult to know whether such elements are indeed unprotectible material. Additional evidence would help inform the question of substantial similarity.”52 The court added that the lower court had also failed “to compare the original selection and ar- rangement of unprotectable elements between the two works.”53 Furthermore, in its decision, the Ninth Circuit stated that the lower court had not erred when it failed to apply the inverseratio rule, since the Ninth Circuit had already held in Skidmore that the rule was no longer to be used.54 These developments, although unpublished, bring hope to independent creators.

Coronavirus, Productions, and Assumption of Risk

This June, New York State issued guidelines for film and TV production to resume in Phase Four and began accepting film permit applications for after June 30.55 This news came a few weeks after the Industry-Wide Labor- Management Safety Committee Task Force (Industry Task Force) submitted a white paper containing recommended protocols to governors across the country, including California and New York.56 Shortly after the announcement came regarding productions resuming, the DGA, SAG- AFTRA, IATSE and Teamsters released a comprehensive joint report entitled “The Safe Way Forward” on June 12, detailing the guidelines that will need to be implemented in order to safely resume production.57 Although this is great news for the industry, productions must still be aware that they are following the guidelines and not cutting corners.

New York has designated certain permit restrictions, which include no reserved parking, no street closures or holding of vehicles, maximum amount of allowed equipment, no filming locations within 16 feet of an establishment participating in the NYC Open Restaurants program without written consent from the establishment among other requirements.58 The union guidelines are described as “a detailed set of science-based protocols serving as a path for Employers to uphold their responsibility of providing safe workplaces in a pre-vaccine, COVID-19 world” that were put together in consultation with leading epidemiologists and experts.59 The central focus is protecting performers, as they are the most vulnerable because they cannot always physically distance or wear personal protective equipment while filming.60 Frequent and regular testing is heavily emphasized and the protocol for testing is largely dictated by the zoning system that has been created based on proximity to cast and on-site production crew.61 Companies are required to provide personal protective equipment daily and operations relating to health safety on set are to be exclusively handled by the healthy safety supervisor and his/her/ their team on set.62 The guidelines also suggest shorter, 10-hour workdays, as well as guaranteed sick leave for cast or crew members who contract COVID-19 on set.63 The guidelines are expected to evolve as the state of the pandemic progresses.

In addition to the guidelines set forth in the white paper and the Safe Way Forward guidelines, entertainment productions must also take into consideration applicable federal laws and guidelines, such as The Occupational Safety and Health Administration's (OSHA) COVID-19 guidelines, the CARES Act, and workers' compensation protocols for employees. In addition, when it comes to hiring or re-hiring employees who have underlying health conditions that make them more at risk of contracting COVID-19, certain provisions of the Americans with Disabilities Act may come into play. For example, Governor Gavin Newsom of California issued an executive order stating that employees who contract COVID-19 on the job will be presumed to have suffered from a work-related injury and as such will be presumed to be covered by workers' compensation.64 While New York has not speci- fied whether this type of presumption will be applied, the New York Workers' Compensation board has issued guidance stating that employees who contract COVID-19 on the job will be more likely to receive benefits.65

As employers may not be completely shielded from litigation if a cast or crew member contracts COVID-19 on a production, another issue is whether waivers not to sue may be enforceable. While the Editors Guild and the Cinematographers Guild have both issued guidelines that prohibit employers from asking or requiring any crew members to sign liability waivers, other unions have not specified whether waivers are prohibited.66


  1. See Opinion and Order re: Plaintiff's Motion for Reconsideration, Sinclair v. Ziff Davis, LLC, 1:18-cv-00790 (S.D.N.Y. Jan 29, 2018).
  2. See Opinion and Order re: Motion to Dismiss the Second Amended Complaint, page 2, Sinclair v. Ziff Davis, LLC, 1:18-cv-00790 (S.D.N.Y. Jan 29, 2018).
  3. Id. at page 3.
  4. 4. Id.
  5. Id.
  6. Id.
  7. Bill Donahue, Judge Revives Photog's Suit Over Embedded Instagram Posts, Law 360 (Jun. 24, 2020), available at https://www.law360. com/articles/1286412.
  8. See supra note 1, at page 3.
  9. Id.
  10. Adir Robertson, Arthur Conan Doyle's Estate Sues Netflix For Giving Sherlock Holmes Too Many Feelings, The Verge (Jun. 25, 2020), available at netflix-enola-holmes-sherlock-arthur-conan-doyle-estate-lawsuit- copyright-infringement.
  11. Id.
  12. Id.
  13. Id.
  14. See Complaint, Conan Doyle Estate Ltd. v. Springer et al, 1:20-cv- 00610 (D.N.M. Jun. 23, 2020).
  15. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-04 (9th Cir. 2001); Brown v. Air Pirates, 201 F.3d 654, 658 (5th Cir. 2000).
  16. Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930).
  17. Salinger v. Colting, 641 F. Supp. 2d 250, 254 (S.D.N.Y. 2009), vacated on other grounds, 607 F.3d 68 (2d Cir. 2010); Nichols, 45 F.2d at 121.
  18. Lone Wolf McQuade Associates v. CBS, Inc., 961 F. Supp. 587, 594 (S.D.N.Y. 1997).
  19. New Line Cinema Corp. v. Russ Berrie & Co., 161 F. Supp. 2d 293, 302 (S.D.N.Y. 2001).
  20. Silverman v. CBS, Inc., 870 F.2d 40, 50 (2d Cir. 1989).
  21. Desny v. Wilder, 46 Cal. 2d 715 (1956).
  22. Sullivan v. Pure Flix Entm't LLC, No. B280305, 2018 WL 5993817, at *2 (Cal. Ct. App. Nov. 15, 2018), reh'g denied (Dec. 12, 2018), review denied (Feb. 27, 2019).
  23. Id. at *2-4.
  24. Id.
  25. Id.
  26. Id. at *5-8.
  27. Apologetics refers to reasoned arguments or writings in justification of something, typically a theory or religious doctrine.
  28. Sullivan, 2018 WL 5993817 at *5-8.
  29. Id. at *8.
  30. Id.
  31. Id. at *11.
  32. Id.
  33. This is in contrast to New York law, which requires the idea to be novel in order for a plaintiff to prevail. Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368, 376 (2d Cir. 2000).
  34. In copyright law, scènes-a-faire is not considered in the substantial similarity analysis. Sullivan, 2018 WL 5993817 at *11. However, courts adjudicating copyright cases are encouraged to consider whether the works at issue are original in the way that they select and arrange unprotectible elements that would normally constitute scènes-a-faire. See Alfred, infra, note 46 at *2. Theft of idea cases generally are easier to prove than copyright infringement. However, given the new decisions by the Ninth Circuit, proving copyright infringement for plaintiffs has become easier.
  35. Sullivan, 2018 WL 5993817 at *13.
  36. Id. at *14-15.
  37. Id. at *17-18.
  38. Sullivan v. Pure Flix Entm't LLC, No. S253072, 2019 Cal. LEXIS 1299, at *1 (Feb. 27, 2019).
  39. Skidmore as Tr. for Randy Craig Wolfe Tr. v. Zeppelin, 952 F.3d 1051 (9th Cir. 2020).
  40. Id. at 1057-60.
  41. Id. at 1061.
  42. Id.
  43. 4 Nimmer on Copyright § 13.03 (2019).
  44. Skidmore, 952 F.3d at 1061.
  45. Id. at 1080.
  46. Hall v. Swift, 786 F. App'x 711 (9th Cir. 2019); Zindel as Tr. for David Zindel Tr. v. Fox Searchlight Pictures, Inc., No. 18-56087, 2020 WL 3412252 (9th Cir. June 22, 2020); Alfred v. Walt Disney Co., No. 19- 55669, 2020 WL 4207584, at *1 (9th Cir. July 22, 2020). As of the time of this writing, these decisions are unpublished.
  47. White v. Samsung Elec. Am., Inc., 989 F.2d 1512, 1521 (9th Cir. 1993) (Kozinski, J., dissenting) (“For better or worse, we are the Court of Appeals for the Hollywood Circuit.”).
  48. See supra, note 46.
  49. See Zindel, supra note 46 at *3.
  50. Id.
  51. See Alfred, supra note 46 at *2.
  52. Id.
  53. Id.
  54. Id. at *3; 952 F.3d 1051, 1066 (9th Cir. 2020).
  55. Jill Goldsmith, New York State Issues Production Guidelines, NYC Now Accepting Film Permit Applications for Work After June 30, Deadline, (Jun. 24, 2020), york-state-production-guidelines-ny-film-permits-applications- june-30-1202968865/.
  56. Carolyn Giardina, Industry Task Force Submits Production Health Guidelines to State Governments, The Hollywood Reporter (Jun. 1, 2020), available at screen/industry-task-force-submits-production-health-guidelines- state-governments-1296700.
  57. The Safe Way Forward, SAG-AFTRA, available at https://www. June2020EditedP.pdf.
  58. See supra, note 39.
  59. See supra, note 40.
  60. Id.
  61. Id.
  62. Id.
  63. Id.
  64. California Executive Order N-62-20, available at
  65. Lindsay Colvin Stone, UPDATED: New York Workers' Compensation Law: Is COVID-19 Compensable?, Sheppard Mullin Labor & Employment Blog, (Apr. 30, 2020), available at https://www. new-york-workers-compensation-law/.
  66. David Robb, Editors Guild Issues Protocols For Safe Return To Work During Pandemic: No Liability Waivers, Shorter Workdays, Nondiscrimination Against Older Crew Members, Deadline, (Jun. 10, 2020), available at editors-guild-return-to-work-protocols-1202956038/; Local 600 Principles, Key Recommendations and Recommended Departmental Protocols (Jun. 3, 2020), available at https:// recommendations-for-returning-to-work-060120-final-wm.pdf.

Neville L. Johnson and Douglas L. Johnson are partners at Johnson & Johnson LLP, in Beverly Hills, CA, practicing entertainment, media, business and class action litigation. Suna Izgi, a third-year law student at Southwestern Law School, is a law clerk there who helped write this article.

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