February 2006 - Walking the Copyright Line

Imitation is the sincerest form of flattery, but does that apply to DRTV? Two court cases can help marketers better understand copyright law, and how it could affect their product and show concepts.

By Greg Sater

Flipping channels, you keep seeing the same infomercial over and over again. You put the remote down, and you watch as the host enthusiastically discusses the latest blender, chopper, knife set, ladder, vacuum cleaner, sweeper or air purifier, and explains why it is a bargain at the offered price. You think to yourself: “This is pretty basic stuff. It’s not rocket science, so why can’t I do the same thing?” Good question. You can! But, for the blender, chopper or knife set, etc., that you are going to sell, how close can the creative content of your commercial be to the creative content of the commercial that you saw before? When does your imitation cross the line and go from simply being the sincerest form of flattery, to being illegal copyright infringement?

To begin, let’s explore the law of copyright in the specific context of DRTV by comparing and contrasting two real life court cases that resulted in diametrically opposite outcomes for the TV commercials in question. The cases are Smart Inventions v. Allied Communications, 94 F. Supp.2d 1060 (C.D. Cal. 2000) and Miracle Blade v. Ebrands Commerce, 207 F.Supp.2d 1136 (D. Nev. 2002).

In Smart Inventions, the plaintiff rolled out a two-minute commercial for a portable, disk-shaped, battery-operated light, called the “Tap Light,” which would illuminate when its dome was pressed. The defendant saw the “Tap Light” commercial and evidently liked what it saw because the company then produced its own commercials featuring a competing disk-shaped light, called the “Click Light,” which also illuminated when its dome was pressed. Even though (because the plaintiff had no patent on the product), the defendant had the right to sell what was basically the same product, the court, nevertheless, granted an injunction against the defendant. The basis for the injunction was copyright law. The judge ruled that there were too many similarities between the creative content of the defendant’s commercial and the creative content of the plaintiff’s.

The court went through each of the similarities between the two commercials and, for each similarity, analyzed two things: whether the allegedly copied portion, image, language or scene from the plaintiff’s TV commercial was creative, distinctive or original enough to be protected by copyright law in the first place; and second, if so, whether the version put out by the defendant was too similar.

In both commercials, the first scene was of a woman in bed, in a dark bedroom, with a man sleeping beside her fumbling for a light switch, with some narration in the background about being in the dark. In both commercials, the woman was seen reaching over to turn on the light product on the nightstand, getting up while the man remained asleep, going to the bathroom and standing in front of a mirror and sink, turning on another one of the light products mounted in the bathroom, and washing her hands, with narration in the background about the need to get up in the middle of the night “when nature calls” or for a “late-night trip to the washroom.” Both shows had a scrolling list, on the left side of the screen listing possible uses and locations for the product. Both showed the product mounted in a closet.

Both featured a light mounted along a dark indoor staircase, with a child walking up or down the staircase. Both depicted a child’s hand reaching up and clicking on the product. Both showed it mounted outside, along a walkway. Also, both commercials showed it being used to replace a broken interior light in a vehicle. Both showed it being used during a storm, with narration citing the need to find candles when one’s power supply goes out in a storm. Both discussed that other similar products sell for up to $10 each, and referred to six of their light products together as a value of $60.

As the court explained in its detailed opinion, certain things are not protectable by copyright, and are free to be copied or mimicked. An idea, in and of itself, is not protectable by copyright; only the particular way in which the idea has been expressed. Similarly, a fact is not protectable; only the way in which it has been conveyed. And when an idea or fact has been expressed in a particular way but in fairness it really can only be expressed in that way, it is again unprotectable. Finally, a scene, theme, plot or sales pitch that is common or standard in the treatment of a given concept, meaning it has been used many times before by others in the same industry, is not protectable. It is a so-called “scene a faire,” that is, a scene that “must be done.” For example, the court noted, “In the genre of television commercials for direct telephone and mail sales, scenes a faire include references to more expensive competing products, shots of print ads of such products, free offers of complementary goods, close-ups of the offered item in use, and close-ups of ‘undesirable’ competing goods during similar use.”

For the above reasons, the court found no copyright infringement of the scene in the plaintiff’s commercial in which its light product is used during a storm, where the power has gone out. While both commercials dealt with this idea or concept, they expressed it in different ways. The court also found no infringement in the fact that both commercials mentioned that their light products were battery-operated, water resistant, turned on or off by tapping their domes, could be mounted on walls and were sold by others for up to $10, so that six of them added up to a $60 value.

In addition, the court found that several scenes in the plaintiff’s commercial contained protectable expression, and ruled that the defendant’s commercial infringed those scenes through substantially similar scenes in the defendant’s show.

With regard to the scene in the plaintiff’s commercial involving the woman in bed fumbling in the dark for a light switch on her nightstand and heading to the bathroom, the court said the idea of using such a light as a nighttime visual aid “can be expressed in a myriad of ways.” The defendant did not have to express it in the same way as the plaintiff and, by doing so, committed copyright infringement. Nor was it “indispensable in the treatment of the idea” for the defendant to display a scrolling list of uses and locations for the product, just like in the plaintiff’s commercial.

Nor was it necessary for the defendant to show a dark indoor staircase with a child on it. As the court wrote, “There are several ways to express this idea. An actor need not be present in this scene at all [or] one or more adults could be depicted going up or down the stairs.”

The court’s conclusion was that, “taken as a whole, an ordinary person could perceive a substantial taking of protected expression.”

In the Miracle Blade case, however, there was a very different result. There, the plaintiff rolled out an infomercial for a set of kitchen knives called “Miracle Blade III.” In the infomercial, the host, Chef Tony, praised the Miracle Blade knife set before an enthusiastic live audience of cooking school students, in France, with demonstrations involving fruits, vegetables, bread, a pork chop, flowers, and even some physical abuse to the knives, to show their hardiness. The offer was $39.95 via a toll-free number for a multi-piece set containing two slicing knives, one cleaver, one chopper-spatula, one paring knife, one set of kitchen shears, and four steak knives.

The defendant then came out with an infomercial for the “Katsu Contour Pro” knife set. In the infomercial, an Englishman, named “Mick,” and a female co-host presented the Katsu knives to an audience of consumers, in a kitchen setting and did demonstrations involving fruits, vegetables, bread, a pork chop, flowers and physical abuse to the knives to show their hardiness. The offer was $39.95 via a toll-free number for a multi-piece set that was very similar in composition to the plaintiff’s set.

The court found that the allegedly copied elements of the plaintiff’s show, such as the product demonstrations, were not protectable. Based on expert testimony and video clips of other infomercials and spots, the court observed that many of the Miracle Blade product demonstrations were not original, but had appeared before in other TV commercials for other kitchen knife sets, observed that the $39.95 advertised price was a fact; and therefore, non-copyrightable, and opined that the many “bonus offers” made during the course of both infomercials were “scenes a faire” very common to the genre.
The court evaluated the scenes, sequences of events and overall “look and feel” of the shows, and found “significant differences in the settings, the moods, the plots and the dialogue.”

For example while the plaintiff’s show featured Chef Tony, whose demonstrations were made to a cooking school audience in France and discussed the German technology in the knives, the defendant’s show featured an Englishman, named “Mick,” plus a female co-host. Their demonstrations were not made in front of a cooking school audience in France, and they mentioned not German but Japanese technology.

Because the court felt there was a lack of originality and distinctiveness in each of the elements of the plaintiff’s infomercial that the defendant allegedly copied, the court in Miracle Blade concluded that “[a]n ordinary consumer would not find that the defendant has taken protected expression from the plaintiff.”

There is a practical, real-world reason why industry attorneys tend to advise their clients to pay attention not only to FTC, patent and trademark issues, but also to be mindful of the law of copyright. The reason is that there can be significant adverse repercussions for you if you are found to have violated someone’s copyright, as part of your advertising campaign.

A plaintiff who successfully proves that there has been a copyright infringement can stop an entire advertising campaign dead in its tracks with an injunction. H e or she also can win damages plus all of the defendants’ profits (if the court decides that those profits are “attributable to” the infringement). That can really add up, because when something that is copyrightable has been used without the copyright owner’s consent, as part of an advertising campaign, then the profits that are found to be “attributable to” the infringement potentially can constitute a major percentage (or even all) of the profits generated by the advertising campaign.

That is definitely something worth thinking about.

Greg Sater is an attorney with Rutter Hobbs & Davidoff Inc., a law firm based in Los Angeles. He can be reached at (310) 286-1700, or via e-mail at [email protected] To submit comments, please point your browser to copyrightfeb06.marketing-era.com.

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