Remember the “senior superlatives” from your high school yearbook? Maybe you were voted “most likely to succeed” or “most likely to be a rock star.” Me? My dear classmates graciously awarded my best friend and me the title of “Most Likely To Be in an X-Rated Movie.” (It was unclear whether we were supposed to star in it together or what.) At the time, I pretended it was a compliment, smiled and curtseyed, and then secretly vowed to spend the rest of my life proving them wrong. Well Bellingham High School Class of 2002, now I realize what you actually meant to say: Amber M. Burroff, “Most Likely To Write a Sassy and Salacious Legal Blog About an X-Rated Movie.”
So, here’s the scoop. In April 2009, Arrow Productions, Inc., owner and distributor of Deep Throat — a tastefully-titled carnal classic whose plot (the sexual adventures of a sexually frustrated woman who is in search of the saucy secret to the female orgasm) is surpassed in greatness only by its tagline (“How far does a girl have to go to untangle her tingle?”) — filed suit against VCX Ltd. and its owner, David Sutton, alleging a variety of claims for copyright and trademark infringement arising out of VCX’s unauthorized distribution of Deep Throat. According to Arrow’s complaint, VCX and Arrow are both in the business of “selling prerecorded sexually oriented motion pictures for personal home use, presently and, in recent years, in DVD format and previously in VHS videotape format.” (Translation: “we sell porn.”) And in addition to competing for sales of Deep Throat, Arrow and VCX have both long distributed one of the other seminal classics of the “Golden Age of Porn,” Debbie Does Dallas.
Last month, though, after two and a half years of down-and-dirty legal combat, Arrow and VCX suddenly settled the lawsuit, with the parties agreeing that Arrow would hold the exclusive rights to Deep Throat, while VCX would move forward as the exclusive distributor of Debbie Does Dallas. So now that this long-running battle over two titans of adult film history has come to a sudden and anti-climactic finish, what lessons can we learn?
Reading Between the Lines of the Complaint
Even if they may not be the most stimulating subject, let’s start with the basics: the legal claims.
It seems pretty obvious that the pivotal issue in this case was whether VCX’s distribution of unauthorized copies of Deep Throat constituted copyright infringement. Yet Arrow’s complaint devoted a measly 14 lines, on page 23 of the complaint, to its claim for copyright infringement — the thirteenth independent cause of action it asserts. Why would Arrow bury the lede? Presumably because it was worried that its copyright infringement claim was dead in the water from day one.
VCX’s main defense in the case was that it was free to distribute Deep Throat because the film entered the public domain (i.e., lost copyright protection) when it was first circulated to theaters without a copyright notice in 1972. (This copyright notice requirement, like many of the quirks of the 1909 Copyright Act, was eliminated in the 1976 Copyright Act, which governs works created after January 1, 1978.) If VCX was right, then Arrow wouldn’t just be unable to stop VCX from distributing its prized porno production: it couldn’t stop anyone else either.
So, to get around the vulnerability of its copyright infringement claim (and the risk that vulnerability posed to its business in general), Arrow’s complaint claimed trademark rights in the phrases “Deep Throat” (the title of the picture) and “Linda Lovelace” (the name of the orgasm-hunting character), and buried the copyright claim amidst a barrage of contingent trademark claims arising out of VCX’s use of those marks in connection with its sales of Deep Throat. While it may make for difficult reading, Arrow’s strategic decision may well have been defensible if its trademark claims were actually stronger than the buried copyright claim. The real problem? They’re not.
Sure, Maybe They Can Sell Deep Throat, But Can They Call It Deep Throat? (Answer: Yes.)
As regular readers of our blog know, trademarks are words, images, and phrases that help consumers identify the source of a product or service. And, says Mr. DeWitt of this pivotal issue: “Even if the movie were in the public domain, [VCX] could sell it, but they couldn’t use the title; we’ve trademarked that. They’d have to call it something else, and that would eat into their sales considerably, I would assume.” Hmmmm…I’d love to see the legal authority that supports that position. Hint: it doesn’t exist.
In fact, it is a general principle of law that the title of a public domain work cannot be protected by trademark. And this makes sense: a public domain work, by definition, can be distributed or exploited by anyone. If the law were otherwise, and the title of a public domain work could be protected as a trademark, it would frustrate copyright policy because trademark law could be used to prevent works in the public domain from being freely distributed. So if Deep Throat is in the public domain, then VCX’s use of the phrases “Deep Throat” and “Linda Lovelace” couldn’t serve any source-identifying function — rather, VCX would just be referring to the genuine title of the film and its main character, without implicating trademark law at all.
In other words, Arrow’s complaint focuses on claims for trademark infringement because Arrow was apparently worried that its claim for copyright infringement was, on its face, weak. But if VCX is right, and Deep Throat is in the public domain, Arrow’s trademark claims necessarily flop too. Hence my conclusion that Arrow’s decision to bury its copyright claim in a sea of trademark claims wasn’t worth the confusion it causes. But what makes Arrow’s framing of its complaint even worse is the fact that Arrow could have made a pretty solid argument (had it tried) that Deep Throat was not in the public domain at all.
Can Deep Throat Be Saved from the Public Domain? (Answer: Probably.)
Remember, VCX’s argument is that Deep Throat was circulated to theaters without a copyright notice, and that, under the 1909 Copyright Act (applicable at the time of release), this would constitute a “general publication” that thrusted (no pun intended) the movie into the public domain. Arrow’s counterargument is that, during the early theatrical exhibition of the movie, the screenings were “four-walled.” In other words, Arrow’s predecessor rented the theater, sold the tickets, collected the revenue, and operated the projector. The idea is that the film never left Arrow’s control, and therefore, the theatrical exhibition of Deep Throat did not constitute a general publication. If Deep Throat’s release was merely a “limited publication,” the lack of a copyright notice would not be fatal to its copyright status. This is, as you can imagine, a tough and nuanced argument. There’s also a good chance it’s right.
While the 1909 Act places immense importance on the concept of “general publication,” it doesn’t actually define the term. For that, we can look to Professor Nimmer, a virtual god of copyright who has centuries of copyright law tattooed on his brain. According to Nimmer, general “publication occurs when by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public.” Nimmer has expressed the view that the distribution of a film on an unrestricted and commercial basis constitutes a general publication.
In contrast, a limited publication “communicates the contents of a (work) … to a definitely selected group and for a limited purpose, and without the right of diffusion, reproduction, distribution or sale … (and) does not result in loss of the author’s common-law right to his (work) …. [T]he circulation must be restricted both as to persons and purpose, or it can not be called a private or limited publication.” Nimmer goes on to say that the theatrical exhibition of a motion picture, where the audience is merely allowed to view the work, is not in and of itself a publication. And courts have specifically held that audience test screenings, even where the copyright owner charges a small admission fee, are limited publications. Without having all the dirty details about the late-night exclusive Deep Throat porn fests of the 1970s, it’s difficult to conclusively say that Arrow avoided the general publication trap by “four-walling” the film. But given the existing law on test screenings and limited publication, I think it’s a pretty darn good argument.
Can a Plaintiff Really File a Lawsuit and Walk Away With Less Than It Started With? (Answer: You Betcha.)
Even with that argument available to it, Arrow probably didn’t want to risk a judicial decree thatDeep Throat was in the public domain, so the fact that it chose to settle comes as little surprise. And as mentioned above, this case ended with Arrow turning over to VCX the exclusive right to distribute Debbie Does Dallas (a film Arrow and VCX were both distributing) in exchange for VCX conceding that Arrow had exclusive rights to Deep Throat. Seem like a pretty fair trade, right? Not at all. In fact, Arrow’s settlement might have been the worst part of its legal strategy of all.
In 1987, the Eastern District of Michigan specifically ruled, at VCX’s urging, that Debbie Does Dallas had been “irretrievably injected into the public domain” because it was — you guessed it — distributed without proper copyright notices. (Try not to snicker at the court’s choice of words.) In other words, while VCX may have been peeved about Arrow competing with it in distributing Debbie Does Dallas, there was virtually nothing VCX could do to stop Arrow. Which means that Arrow gave up the right to do something it was definitely legally entitled to do (because Debbie is in the public domain), and gave up its lawsuit against VCX for doing something VCX was likely not entitled to do (because Deep Throat probably is not in the public domain), in exchange for VCX’s acknowledgement that VCX wasn’t allowed to do it and its promise to stop. Wow. Now that’s what I call a deal.
The icing on the cake here, of course, is that two and a half years of litigation didn’t just leave Arrow with less than it started with — it left Arrow with the same deal it could have had two and a half years (and several thousands of dollars in legal fees) ago.
According to news reports, VCX’s decision to start selling Deep Throat, in 2008, was itself retaliation for Arrow’s decision to start selling Debbie Does Dallas back in 2004. Undeterred byDebbie’s “irretrievable injection” into the public domain back in 1987, VCX had claimed “mob provenance” — excuse me, what? — for its exclusive rights to the film. When that line of reasoned argument didn’t work, VCX basically decided, “If you copy mine, I’ll copy yours,” and went into the Deep Throat business itself — but not before giving Arrow one last chance to trade all of its copies of Debbie for all of VCX’s copies of Deep Throat and have everyone walk away. Even after VCX called Arrow’s bluff and goaded it into this lawsuit, VCX’s CEO, Sutton, told AVN (that’s Adult Video News, for those who aren’t in the know), “If I get away with putting out Deep Throat because of an ambiguity in the copyright status of the film, what it does in effect is throw the title into the public domain, and I do not wish to do that… I don’t think any of us wants to see that happen.” (Talk about a pointless lawsuit — one that even your opponent doesn’t want to win.)
And so, in 2011, Arrow and VCX are finally parting ways, with the same deal they could have had in 2008, before Arrow’s lawsuit was ever filed (or in 2004, before Arrow started sellingDebbie Does Dallas in the first place). Maybe at the end of the day, Arrow’s lawyer, Clyde DeWitt — the so-called “Will Rogers of the adult industry” (whatever that means) — took to heart one of the real Will Rogers’ true pearls of wisdom: “If stupidity got us in this mess, why can’t it get us out?”a