If you enjoy this post, click here to let my blawg directory know.
Adult Video News and The Wall Street Journal Law Blog reports on the suit between International Media Films Inc. and Manhattan filmmaker Andrei Treivas Bregman. The complaint alleges trademark and copyright infringement for the X-rated films he made under his industry name, Michael Lucas. The lawsuit seeks to stop sales of the gay-themed adult films, “Michael Lucas’ La Dolce Vita” Parts 1 and 2. The judge in the case recently denied International’s request that he enjoin Lucas from distributing the film, citing “inexcusable delay” in waiting 5 months to seek the injunction.
Trademark Infringement – Likelihood of Confusion
The trademark question is a tough call. Typically, a title is not protectable unless it is for a series of works. I do feel that there are certain uses of a title of a single work that might be protectable under trademark or unfair competition theories.
However, most scholars disagree. For example, Cumbow says:
The trademark issue is not at all a “tough call.” There is no trademark issue here—either infringement or dilution—because the title of the Fellini film is not a trademark. Titles of single works do not serve as trademarks, because a trademark is a source indicator, and the title of a work merely tells you what the work is, not who it comes from. Once a title is used for a series of works, the rules of the game change, because a second or third STAR WARS film use the term STAR WARS to indicate that the later film comes from the same source as the original film STAR WARS. But until a title becomes associated with a series, it is not a trademark.
I agree with Bob, but my thought is that some films might be so iconic that their titles do become trademarks. This would be a very limited number of films, Casablanca, La Dolce Vita, It’s a Wonderful Life, etc. I will, however, readily admit that I can’t find a single case that backs me up on that. Therefore, if you’re looking for what the law is, go with Bob’s analysis. If you want to debate what it should be, well, I’ve offered my opinion on that.
With respect to the likelihood of confusion analysis, the Judge in this case said that since the films travel in radically different channels of trade, “it thus seems extremely unlikely that a hapless purchaser seeking to buy Fellini’s film will inadvertently stumble across ‘Michael Lucas’s La Dolce Vita.’”
I see the judge’s point, but I am not sure that I agree. I rarely buy movies in person, and usually buy over the internet. I, of course, both know Fellini and have my own copy of La Dolce Vita — but I am not your average consumer. Your average consumer is the idiot driving at 50 miles per hour in the left hand lane on the highway. The average American doesn’t believe in evolution. Judges really should spend more time out with the people to see how dumb they really are before deciding whether the public would be confused.
Here is the box cover for the Gay La Dolce Vita. (Click it to see it in a larger size).
I could see how someone might be confused. That someone is, admittedly, only theoretical. You would have to be a cretin to not notice that it says “Michael Lucas” and not “Federico Fellini,” and if you take more than 10 seconds to glance at the box cover, you’ll realize that this isn’t even a black and white film.
Nevertheless, the number of people who have seen the original dwindles every day. I certainly could see how someone who is not exactly a sophisticated consumer might come home with the wrong video — especially if they were an unsophisticated consumer buying online. I would bet that if you sent the entire student body from Harvard, Yale, and Stanford law schools to pick up Fellini’s La Dolce Vita, a significant percentage would come back with the gay version — completely clueless.
Lucas commented for this entry, saying:
[W]e are talking here about a very specific, incredibly sophisticated group of people who would go out to rent or buy a 46 year old black and white picture with subtitles. Those people do surely know what they are looking for. They also surely would not mistake a sexually explicit movie for Fellini’s movie — and here I am not even talking about the fact that these movies are sold in different stores (and if there is a rare instance where one store sells both, mine will be in a different section, hidden behind a curtain and the warning: “Don’t enter unless you are 21”). That’s probably why the plaintiff could not come up with even one concrete example of confusion between the two movies.
Lucas makes a strong point here. The sophisitcation of the consumer who is looking for Italian neo-realist films is likely of such a level that they would look at the box cover and see that Marcello Mastroianni and Anita Ekberg are glarinly absent.
I do agree with the judge’s skepticism that any video store sells or rents both Fellini films and gay porn. I know of at least one on Avenue A in Manhanttan (but I haven’t been there in years, so it may be gone now – a victim of the destruction of a once cool neighborhood). Lets say that a hapless consumer walks into that store, has been meaning to catch up on his Italian Neo-Realist films, grabs Michael Lucas’ La Dolce Vita, and runs home to his date carrying a bottle of wine, a Pavarotti CD, and a rose. He pops in the DVD and once the film starts playing, someone is going to be very confused.
If you are familiar with Fellini’s later work, like Satyricon, it might take you a little while to figure out that you are watching the wrong La Dolce Vita. Fellini wasn’t much for sacred cows, and while I haven’t seen the Lucas version, I can say that I’ve watched some Fellini work that made me wonder whether the DVD came from a video store with the neon lights outside and the windows blacked out. (I previously blogged that Salò was a Fellini film, but Mr. Cumbow corrected me on that. Color me embarrassed!).
I can certainly live with the judge’s likelihood of confusion analysis. Bob’s statements add up to this: Since there is no trademark, then no infringement — period.
Now, lets talk about dilution. With the TDRA, dilution has become a very exclusive club, with only very famous marks getting past the doorman. I would say that “La Dolce Vita” gets past the velvet rope, into the club, and perhaps even up into the VIP room. International’s lawyer made this persuasive argument:
For a long time, since probably the — well, surely the majority of the world’s population has been alive — this name “La Dolce Vita” has meant one movie. Now it is meaning two, and it identifies two distinctly different types of movie, one of which is I guess free speech, but it is still something that’s held as inappropriate by much of the population.
[W]hat we have here is what for all practical purposes is a serious art film, a work of art being debased by what appears to be a hard-core pornographic film. It is as simple as that. It is our feeling, it is our belief that this is going to damage the picture. It has damaged La Dolce Vita some now, it will damage it more as time goes on and as more people come to associate Mr. Lucas’s work with the words “La Dolce Vita.”
But, lets look at what he’s doing. Lets connect the gay issue, the porn issue, and the trademark issue. Let’s face it, if you’re attacking porn, gays, or especially gay porn, you start with at least a pair of jacks on the draw. I don’t agree that the “inappropriate by much of the population” comment was necessary, nor even probative. I see why he made the argument, but I am disgusted by it. A lot of people consider Fellini to be inappropriate, and you can be certain that they will be writing campaign contribution checks to Sam Brownback’s presidential bid.
Nevertheless, he could have made just as strong of an argument, and remained out of Brownback’s bed. “For a long time, since probably the — well, surely the majority of the world’s population has been alive — this name ‘La Dolce Vita’ has meant one movie. Now it is meaning two…” is very persuasive.
I think that the lawyer for International was inappropriately playing to an anti-porn and homophobic sentiment, but that (I suppose) would help his tarnishment claim. Lucas has publicly stated that he believes that this case is about anti-porn and anti-gay sentiment. I hardly think that anyone who distributes Fellini’s work could be so motivated, but who knows. Satyricon is practically gay porn itself.
(Sidebar – speaking of Satyricon, Fellini’s version is actually entitled “Fellini Satyricon.” Why? Because a year prior to the film’s 1969 release, Gian Luigi Polidoro had already released a film under the title “Satyricon.” Hmmm… how ironic!)
That being said, lets examine Bob Cumbow’s take on it:
You don’t get a dilution remedy unless you have a trademark, and the title of a single work is not a trademark. So no dilution, period.
However, the unfair competition provisions of the Lanham Act may offer some recourse if a film’s title is genuinely misleading as to the content of the film. The authority on this is Rogers v. Grimaldi, in which Ginger Rogers sued Alberto Grimaldi, producer of a Fellini (!) film entitled GINGER AND FRED. Ms Rogers felt that the title misleadingly suggested that the movie featured, or was about, her and Fred Astaire (it is actually about an aging couple of Italian vaudevillians who perform under the pseudonyms Ginger and Fred). The court agreed that Lanham Act 43a may be invoked where a work’s title serves as a false designation of origin or a false description of the work’s content; but it also held that, in this case, Fellini’s use of the title GINGER AND FRED was not likely to create confusion entitling Ms Rogers to relief. The Rogers v. Grimaldi case was cited and relied on in the later case of Parks v. LaFace Records, in which Rosa Parks sued Outkast and its label for using her name as the title of a song whose content had nothing to do with her. Outkast’s motion for summary judgment was denied, but the case seems to have settled or just gone away after Ms Parks’s death.
I think the only legitimate 43a argument that might fly in the present case is that Lucas’s use of the title LA DOLCE VITA creates the misleading impression that his film is an authorized remake of the original when it is not. A weak argument that might be strengthened if enough reasonable consumers were genuinely confused.
A pretty compelling argument, and I think that what Bob is articulating at the end is probably what I have been in-articulating.
The copyright claim seems supremely flimsy. There are lines ripped off in the film, according to the complaint, as is the general theme of the film. Take a look at these two scenes:
|Fellini’s Fountain Scene
|Lucas’ Fountain Scene
However, it doesn’t seem like the plaintiff will prevail on that count, nor should he.
I do not believe that the First Amendment could tolerate a monopoly grant to International on the theme, or even the lines and iconic scenes in La Dolce Vita.
Lets start by forgetting the content of the Lucas version — which we must do. It seems that nobody can think clearly when it comes to porn or homosexuality, and the content should not enter into the analysis. What we have here is essentially a lousy remake of the original (not lousy as in the Lucas version isn’t quality — like I said, I haven’t seen it, but lets analyze it as if it were a poor imitation of the original). Add it to the list: Shaft, Oceans Eleven, Planet of the Apes, Gone in 60 Seconds, Spartacus, and The Shaggy Dog all ruined the name of the original for a new generation of film viewers. However, Scarface, Cape Fear, and countless others simply brought the new version to an updated audience, and possibly even did credit to the original. But, what we are talking about is my personal taste, and this shouldn’t be turn on personal taste. If I apply my distaste for the content of Lucas’ version, how am I any better than Jerry Falwell or Andrea Dworkin? (Again, I have no judgment of the content of Lucas’ version, but my point is that this should not be about taste).
You have a right to remake a work in a different cultural context. See Suntrust v. Houghton Mifflin Co., 252 F. 3d 1165 (11th Cir. 2001). In that case, the owner of the copyright to Gone With the Wind tried to enjoin, a remake of Gone With the Wind from the slave’s perspective. Relying on Campbell v. Acuff Rose, 510 U.S. 569 (1994), the 11th Circuit held that this type of “parody” was protected.
Now I am ready for comments, accompanied by a shrill shrieking sound, that will say “but this isn’t parody, it’s porn.” Before trying to re-write smut out of the Constitution, which eventually this Supreme Court may do, analyze it from a content neutral standpoint.
What if someone wanted to make a version of “La Dolce Vita” set in an inner city neighborhood, or on an Indian reservation, or in a Nova Scotia fishing village? Taking the theme of a classic, and setting it against a different cultural backdrop is not only common, but a necessary component of cultural evolution. The Seven Samurai becomes The Magnificent Seven, and we are all culturally enriched because of it. Parody doesn’t need to be funny.
Cumbow offers a concurring opinion that addresses some good points that I left out:
If there is a copyright issue it would depend upon whether the Lucas film takes too much from the Fellini film. If it’s legitimately a parody, it’s o.k. If it’s a completely unrelated film that just happens to have the same title, even better. If it is an unauthorized remake, then it may be a copyright infringement—and that doesn’t depend on whether anyone was confused but on whether the Lucas film is substantially similar to the Fellini film, and whether the elements it has in common with the Fellini film are protectable rather than scenes a faire or de minimis or fair use. That’s a decision that would have to be based on an analysis of both works.
On balance, I’m still undecided as to how I would rule in this case. Actually, I am such a Fellini devotee, that I would have to recuse myself. Nevertheless, if I had to rule, I would toss the copyright claim out on its ear.
I would be more torn, and likely to agree with the plaintiff’s dilution argument, and somewhat inclined to agree with the likelihood of confusion argument. But, then again, I know how to use some internets, so my view might be a little more broad than the Judge’s.
On the other side of the scale, I would place the First Amendment values in play here as well – where they would carry less weight than in the copyright analysis, but still should be considered.
I would be very wary to broadly state that nobody else could use the title “La Dolce Vita.” For example, a parody or a remake of the original might need to, possibly, use the title. Can we say “there is only one La Dolce Vita — the Fellini version?” I guess we can logically say that, but I find little foundation in the law for such a statement — it seems to seek to import moral rights theory into trademark law. This might be a good idea, but it has not yet been legislated, and that would be the proper source for any such change in the law (provided it doesn’t go beyond the mandate of the commerce clause, which it probably does, but I haven’t thought that through).
We seem to have gone through a few thousand years of culture without much repetition in book, movie, or song titles – therefore, if there is a First Amendment harm in ruling for International, I can only detect a faint whiff of it. That being said, a faint whiff of blood in the water a mile away can excite a shark, and the mere whiff of encroachment on First Amendment values raises my hackles.
Process all that through the sausage-making machine in my head, and out the other end comes a dried sopressata that tastes like this:
My initial thought was that there is sufficient likelihood of confusion here to articulate harm to the original. It appears that some actual confusion has been shown, and the LOC scales tip to the plaintiff. Although I am very uncomfortable with dilution theory in general, I do see its value when applied to a select group of exalted marks – and La Dolce Vita reaches that plateau.
However, I have to say that while my initial reaction was that the trademark claims hold water, I have to admit that since the original version of this post was put up, Cumbow’s arguments have swayed my opinion on the trademark issue. There might be dilution, but only in a theoretical sense since there is no trademark.
On the copyright claim, I stand firm.
I see great public harm, and no support in the law for granting the copyright claim. On the other hand, I see no public harm, and some support in the law for granting the trademark claims. Mr. Lucas could take steps to ensure that his version is not mistaken for the original, and could still re-make the film in any cultural context he chooses.
On balance, I think that Bob hits it squarely on the head. Special thanks to him for his contributions to this post. I think I had it a little off-base, and his assistance has really made this a lot better.
An interesting thought was offered by Mr. Lucas — that his film might actually contribute to sales of the original.
I am very proud of the fact that many gay Americans who never would have imagined to rent a black/white Italian classic saw one of Fellini’s greatest Films because of my movie. I got literally hundreds of people commenting that after seeing my film they rented or bought, out of curiosity, Fellini’s La Dolce Vita. And trust me, it only worked this way, not the other way around.
And now, for your pleasure, the iconic scene in “La Dolce Vita” (The Fellini version).