Honorable Mention:  Timothy Geithner

In our Honorable Mention category of “Really, Are You Kidding Me?,” we recognize former Treasury Secretary (i.e., head of the U.S. Treasury, the folks you make that tax check out to) Timothy Geithner, who underpaid his personal federal income taxes from 2001 to 2004 by failing to report and pay social security and self-employment tax on income received from the International Monetary Fund.  Mr. Former Secretary subsequently amended his returns since he “should have been more careful.”  We imagine he regretted his “unintentional” decision not to report that income when appearing before the Senate Finance Committee during his confirmation hearings to control the United States’ piggy bank.

Honorable Mention:  Nick Diaz

In our Honorable Mention category of “How Dumb Can You Be?,” the award goes to MMA fighter Nick Diaz, who recently announced during a post-match press conference that he has “never paid taxes in his life” and “is probably going to jail.”  Well, if Nick had only read about some of the other people on this list, then he definitely would have seen that coming!

#5:  Richard Hatch

Although the name “Richard Hatch” might not mean much to you, you may better remember Hatch as “Consistently, Inexplicably Naked Man” on Season 1 of Survivor, where his penchant for letting it all hang out was somehow rewarded with the show’s first-ever $1 million grand prize.  Well, Dickie may be able to eat rats and bugs with the best of them, but a federal judge voted him off the island and straight to prison for failure to report and pay tax on $1.4 million of income (including the $1 million Survivor payout, hard-earned through relentless backstabbing, conniving, and pantslessness.  While his tour of duty on Borneo island may have only lasted 39 days, Hatch’s fully clothed prison stint lasted a total of 51 months (including time for perjuring himself during his tax trial).  Well, at least he learned his lesson.  At least, that’s what the infomercial says.

Following Hatch’s sentencing, the Department of Justice press release announced, “Our nation’s federal tax system is not a reality show to be outwitted, it is a reality, period.”  Take note, Kardashians!

#4:  Wesley Snipes

Just this month, Wesley Snipes bid adieu to the federal prison in McKean County, PA he has called home for the last 3 years, courtesy of his tax woes with Uncle Sam.  Convicted of tax evasion for willfully failing to file income tax returns (take notice, Nick Diaz), during his sentencing, prosecutors proclaimed that he had earned $38 million since 1999 but had filed no tax returns nor paid taxes through October 2006.  Snipes’ defense:  arguing he was not actually required to pay taxes based on a misguided interpretation of the tax code that has been uniformly rejected by all courts and resulted in at least 8 people being sentenced to prison.  (Well, ninth time’s the charm, eh?  Or not.)

In true Blade vampire hero fashion, Snipes ultimately took a bite out of his advisors and blamed his predicament on bad professional advice.  For what it’s worth, the “but it’s my tax advisor’s fault” defense (i.e. reliance on professional advice) is no longer a valid defense for most tax controversies with the IRS — or, it’s safe to assume, for any controversies where the “advice” was “of course you don’t have to file or pay taxes ever at all!”  And, while your manager may be willing to pick up your dry cleaning or walk your dog, I doubt he’s willing to go to jail for you.

Wesley Snipes appealed his case all the way to the Supreme Court, but they decided not to entertain his antics.

#3:  Joe Francis

Coming under the category of why not to mix business with pleasure, the man responsible for bringing us Girls Gone Wild found himself exposed (and not in the Mardi Gras, party beads kind of way) when he was turned into the IRS by his former tax return preparer, Michael Barrett, under the IRS’s “Whistleblower” program, by which the IRS actually pays people to rat out their tax-cheating friends, families, estranged business partners, corporate rivals, and other loved ones.

Francis was charged by the IRS with claiming more than $20 million in false business expenses on his companies’ corporate income tax returns, omitting interest income on brokerage accounts, and using offshore bank accounts to conceal other income.  According to media reports, the case fell apart when Barrett, the government’s key witnesses, was himself accused of embezzling funds by overbilling Francis’ company hundreds of thousands in fees and expenses for work never performed, while at the same time hoping for an IRS payday by turning Francis in.  (But hey, who could be a more qualified judge of financial crimes than someone with a little experience in the field himself?)

Claiming “victory” against the IRS (here, defined as “much less defeat”), Francis ultimately pleaded guilty to two  counts of submitting false tax returns omitting $562,000 of interest income relating to the brokerage accounts (and, oddly, one count of bribery for paying a prison guard over $5,000 for contraband food).

#2:  Al Capone and Heidi Fleiss

Al Capone and Heidi Fleiss.  Two American heroes (to some, at least).  Purveyors of many fine, sought-after services.  But it wasn’t Capone’s notorious bootlegging or Fleiss’s infamous “little black book” that landed these twentieth century titans of industry in jail:  it was tax evasion.

Capone was never actually indicted for any “major” criminal activity, despite the fact that he was the most notorious rum-runner of his day, and was (allegedly) responsible for an event with the word Massacre in the title.  No, the agency that finally brought down Capone wasn’t the FBI or the ATF:  it was the IRS, which forced Capone behind bars on federal tax evasion charges.  After a federal judge refused to honor a 2 ½-year plea bargain that Capone initially struck with prosecutors, he was convicted of owing $215,000, plus interest (which, in today’s dollars, amounts to more than $3.2 million) in back taxes, and was sentenced to 11 years in prison.  After serving 7 ½ years (some of which, famously, at Alcatraz), and having paid all his back taxes and fines imposed by the Court, Capone was released from prison.

Similarly, the well-known title of “Hollywood Madame” wasn’t enough to land the pimp-turned-parrot ringleader, Heidi Fleiss, behind bars.  Rather, it was the taxes she failed to pay on (and the money laundering committed with) her earnings in the pleasure business that landed Fleiss a 37-month jail sentence in 1997.  (A 3-year prison sentence for a 1993 conviction for pandering was overturned on appeal based on improper juror conduct.)

Following her federal prison stay, Heidi tried to get back to business doing what she does best — albeit legitimately this time (where’s the fun in that?) — and attempted to open a brothel in Nevada, but eventually abandoned that plan.  Ever the entrepreneur, though, Fleiss still managed to make lemonade out of prison-time lemons, penning a successful memoir, Pandering.  So take heart!  You too can have her splayed… sorry, we mean displayed… on your coffee table.  Let’s hope she paid tax on her book profits.

#1:  Willie Nelson

There could never be any doubt that Law Law Land’s Award for Overall Achievement in Tax Problems would go to a musical icon and American legend who collected the greatest hits of his career to date under the title, “The IRS Tapes:  Who’ll Buy My Memories?”

It turns out the answer to that question is:  enough people to generate $3.6 million in sales, all of which was turned over to the IRS to satisfy a portion of Nelson’s approximately $16 million debt to the IRS.

Unlike many of our other award winners, Nelson’s spar with the IRS was not for failure to file or failure to pay, or failure to use common sense, but primarily for claiming invalid deductions related to tax shelters the IRS subsequently discredited and disallowed — resulting in a judgment for $6 million in back taxes, plus approximately $10 million in interest and penalties.  After just about all his worldly possessions were sold, Willie recorded the compilation album that is just “him and his guitar,” about the only thing he had left.

Nelson eventually sued his tax preparers, Price Waterhouse, charging that they failed to adequately investigate the tax shelters that led to this uniquely tax-related moment in musical history.  The company denied responsibility, but agreed to an undisclosed settlement with Nelson — though not before arguing that he was better off even with their “bad advice” because he settled with the IRS for $3.5 million less than he would have owed had he not claimed the shelters in the first place.  (Then again, Nelson qualified for a special discount because he was bankrupt.)

But Nelson kept his chin up through the legal battles and property sales, saying “The things that did sell were just things.  So actually, I haven’t lost anything.”

Except, you know, all the things they sold to pay the debt.

So What Have We Learned?

It should come as little surprise that celebrities don’t like paying taxes any more than the rest of us.  But what lessons can we draw from our famous friends?

1.         Pay your taxes, especially if you earned your money strutting your stuff on the beach on national television (again, Kardashians, take note).

2.         If you are going to claim you are above the fray and don’t have to pay taxes like the rest of us, at least pick a rationale that hasn’t been debunked by every court which has heard the argument and landed 8 people in prison before you.

3.         While getting girls to loosen up on camera might make you millions, playing fast and loose with the IRS will land you in hot water (and not the hot tub in the back of a limousine filled with girls kind).

4.         If you’re earning money from conducting illicit criminal activity, the crime of not paying tax on that income is sure to get you; and

5.         When your career achievement is recording a soundtrack for the IRS, it’s time to call it a day.

Have a favorite celebrity/IRS showdown from this list, or one we didn’t cover?  Let us know in the comments section.  After you file your tax returns.

After recounting Bill Maher’s hilarious response to the lawsuit, I boldly joined the near-consensus of legal observers in predicting that Trump would lose the lawsuit.  And I’m here to report, I was wrong — Trump never even had a chance to lose the case, because he dismissed the lawsuit himself, perhaps as a result of his lawyers reaching the same conclusion I did.  (Or perhaps, Trump’s simian brain finally realized that the situation had evolved beyond his control.)

Sadly, now that The Donald has apparently learned what a joke is and what a contract is, those of us who regularly watch Bill Maher’s show will probably no longer get our weekly dose of laughs at The Donald’s expense.  And with that loss, you might ask:  why is this update worth writing about?  Because Bill Maher now has to decide whether to try to make Trump pay for monkeying around with the legal system.

As I noted when Trump’s case first bombarded the headlines with its inanity, Maher’s menu of potential responses to Trump’s lawsuit included a so-called “anti-SLAPP motion,” a type of motion directed at lawsuits that chill first amendment expression and other exercises of constitutional rights — which, if successful, could make Trump liable for Maher’s attorneys’ fees in defending the claim.  Now that Trump has withdrawn his lawsuit (though, his lawyers insist, only “temporarily”), that option seems to be off the table.  But Maher still might be able to sue Trump for malicious prosecution.

Malicious prosecution actions allow a defendant who successfully fends off a frivolous lawsuit to pursue the defeated plaintiff for damages, such as for attorneys’ fees or emotional distress.  And, while malicious prosecution actions are generally disfavored by courts, so are rich idiots who think the law is a toy to play with.  In other words, just because Trump dismissed the lawsuit voluntarily does not mean that Bill Maher can’t sue him for malicious prosecution.

If Maher decides to proceed with a malicious prosecution action, he would need to prove three things:  (1) that Trump’s lawsuit resulted in a favorable termination for Maher; (2) that the lawsuit was begun with malice; and (3) that it was prosecuted without “probable cause.”

Here, the first element is easily met:  Trump dismissed the lawsuit.  The second element is also probably met (though Trump could at least try to deny it):  Trump’s lawsuit was initiated for an improper purpose, i.e., no reasonable person would file a lawsuit based on the scientifically impossible premise of humans being able to produce offspring with orangutans.  Finally, the third element is probably met:  no reasonable attorney would believe this lawsuit to have merit.

While “good faith reliance on the advice of counsel, after truthful disclosure of all the relevant facts, is a complete defense to a malicious prosecution claim,” can anyone really say that The Donald acted in good faith here?  The Donald probably can’t blame his lawyers for not telling him that this lawsuit lacked merit.  In my own (admittedly, extremely, infuriatedly biased) view, any reasonable person would have known that without needing a lawyer’s advice.

Alas, Bill Maher seems, by temperament, much more inclined toward brutal takedowns on the comedy stage than in the courtroom.  Maybe he can just offer Trump $5 million if Trump can prove that his lawsuit was not conceived by a room full of monkeys working on typewriters who accidentally produced a page that read, “Sue the comedian!”

In this episode, called “Red Team/Blue Team,” Will and Diane attempt to persuade their stubborn client, purveyor of “Thief” energy drink, to settle a wrongful death lawsuit brought by the family of a teenage girl.  (Obviously, you can assume that the manufacturers of any product called “Thief” are only the most right-thinking, trustworthy clients you can find.)  In order to persuade the client of the weaknesses of the case, they conduct a mock trial, with Alicia and Cary serving as plaintiff’s counsel.  Research revealed that a freelancer engaged by the defendant company had acted as a cyber-shill, and had posted glowing reviews about the drink and its ability to help people lose weight on various websites, without disclosing any affiliation to the company.  (If you want to know what one of these posts look like, just check the comment thread on any unmoderated blog or news website for some unsolicited glowing reviews of various black market pharmaceutical websites.  V1agra, L0se W3ight, W0rk fr0M H0me, fR33 iP0ds!)  When Alicia cross-examines the company’s marketing executive about this practice, he protests, “That’s not illegal!”  Alicia agrees, but argues the company is still liable for a different reason (and of course, she’s our heroine, so it is).

But not so fast on that fake ads issue, my friends.  Maybe television writers don’t have time to research the latest FTC before turning in a script, but lawyers certainly do.  And, pursuant to the endorsement guidelines promulgated by the Federal Trade Commission, an online reviewer of a product must reveal any relationship with the seller, especially a financial connection.  And lest you think that, “surely the FTC doesn’t really monitor these things,” wrong again.  In the past two-and-a-half years, the FTC has become increasingly vigilant about the use of cyber-shills and deceptive claims.  This is especially true when there are health implications to the claims, such as in the case of the energy drink featured on The Good Wife.

As an extreme example, the FTC recently succeeded in ceasing the operations of certain online marketers that allegedly used fake news sites to increase sales of their products.  But the FTC also targets companies whose bloggers post reviews without announcing any affiliation, and significant fines can result (not to mention bad publicity and potential tarnishment of the brand).

As always, businesses should make sure they are being guided by the FTC guidelines and experienced legal counsel, not by TV lawyers.  And writers and producers of The Good Wife, if you ever need a legal consultant for your show, feel free to give me a holler.

In January, Maher visited fellow comedian Jay Leno on The Tonight Show.  There, Maher discussed his “beef” with Donald Trump, who Maher claimed had rejected several invitations to appear on Maher’s late-night HBO show, Real Time with Bill Maher — evidently to Maher’s relief, given that Trump was such “a terrible racist.”  Of course, the ever-gracious Mr. Maher was quick to wish “the best for the syphilitic monkey who does [Trump’s] Twitter feed.”

Seizing upon the “syphilitic monkey” moniker, the conversation led (as it naturally would) into a joke about Donald Trump being “the spawn of his mother having sex with an orangutan” because, according to Maher, “the color of [Trump’s] hair…and the color of an orange orangutan is the only two things in nature of the same color.”  (Obviously.)  Ultimately, Maher concluded the joke by announcing — in an apparent parody of Trump’s (not actually) “very big,” (not remotely) game-changing pre-election announcement (more on that in a moment) — “I hope it’s not true…but unless [Trump] comes up with proof [that he is not the lovechild of an orangutan]…I’m willing to offer 5 million dollars to Donald Trump…that he can donate to a charity of his choice.”  As an example, Maher suggested the “Hair Club for Men.”

The very next day, demonstrating the sense of humor for which he has become legendary, Trump had his attorney write to Maher, formally accepting Maher’s “offer” and attaching a copy of Mr. Trump’s birth certificate, demonstrating that Trump is indeed “the son of Fred Trump, not an orangutan.”  (Can you imagine being the poor lawyer who got that “urgent” assignment at midnight?)  Trump demanded a $5 million payout, and when Maher ignored the demand letter, Trump actually filed a lawsuit in Los Angeles Superior Court demanding $5 million in damages.  Let me be clear:  this is not actually a joke.  This is a lawsuit that has seriously been filed.

This prompted Maher to assert that Trump needs to understand two basic concepts:  “what a joke is and what a contract is.”  And although we all know how this case is going to end, we would be remiss in not taking this opportunity to dedicate an entire blog post to The Donald’s bloviating buffoonery.  Could Trump really take this lawsuit all the way to the bank?

Reward Offered for Donald Trump’s Sense of Humor (Dead or Alive…Probably Dead)

Under certain circumstances (usually where someone has actually expended time, money, or other resources in response), an offer to pay a reward — even if it is something said on YouTube or on television — can be enforceable.  For example, a jury in New York recently decided that musician Ryan Leslie must pay $1 million to a German man who responded to Leslie’s YouTube reward offer and found and returned Leslie’s stolen laptop, most likely making that the most expensive YouTube ever posted that wasn’t a bling-addled rap video.  Similarly, public rewards for information leading to the capture and conviction of wanted criminals can be enforced in the courtroom.

But of course, to be enforceable, these reward offers must be actual offers, not obvious jokes. As one commentator has pointed out, that is how Pepsi once avoided being forced to hand over an AV-8 Harrier II jump jet to someone who read their “Pepsi Points” contest rules a little too carefully, and it’s why one enterprisnig young law student has spent seven years trying to collect on a Dateline NBC-aired million-dollar challenge.

Joke or Contract?

To evaluate whether Maher’s statement was a joke or a contract offer, we first have to look at some background.  For years, Trump and legions of other “birther” conspiracy theorists who likely share an orangutan lineage with Trump have demanded that President Obama provide proof that he was born in the United States.  Despite Mr. Obama actually providing both “short form” and “long form” copies of his birth certificate, Trump and others refuse to see the light shining brightly through the canopy.  In October, Trump posted a “major announcement” on YouTube offering President Obama $5 million to the charity of his choice if Obama would agree to release his college records and passport application.

The day after Trump’s offer went public, Stephen Colbert made a major announcement of his own, offering Donald Trump $1,000,000 to charity if Trump would let Colbert perform a sex act on Trump (making a vulgar pun relating to the “tea” party).  This was clearly a joke (though I guess we’ll never know for sure, as Trump evidently declined to take Colbert up on his offer).

Then in January, Maher then made his statement on Leno’s late night talk-show.  And, as we have already discussed, Trump went bananas.

Trump’s Preposterous Lawsuit and Maher’s Hilarious Response

In his complaint, Trump attaches a transcript of Leno’s interview with Maher.  After recounting Maher’s comments about Trump being “the spawn of his mother having sex with an orangutan,” and the “offer” to donate money to charity, Trump alleges:  “Demonstrating that he understood Maher’s offer to be genuine, Mr. Leno responded to Maher’s statement by commenting on the substantial sum at issue, stating ‘wow, wow, 5 million dollars!’”  Trump goes on to allege that his attorney formally accepted the offer the next day and that “[a] contract was formed between Maher and Mr. Trump as of the moment the Acceptance Letter was sent.”

Maher’s recent response on his late-night show was priceless.

As noted above, Maher initially noted that Trump needs to understand two basic concepts:  “what a joke is and what a contract is.”  After explaining the meaning of “parody,” Maher showed a copy of the “Acceptance Letter,” and quoted the following passage:  “Attached hereto is a copy of Mr. Trump’s birth certificate, demonstrating that he is the son of Fred Trump, not an orangutan.”  Maher followed this up by asking, “Do these morons even know it’s impossible for people and apes to produce offspring?”

After taking a brief serious moment to state his disgust with Trump and that the law is not “a toy for rich idiots to play with,” Maher quickly returned to his excoriating parody by saying that the birth certificate Trump provided actually “raises more questions than it answers.”  Specifically, Maher joked that he and a growing number of other patriot Americans who call themselves “apers” had serious questions about the “short form” birth certificate Trump attached as an exhibit.  Maher demanded to know the whereabouts of the “long form” certificate and found it ironic that Trump produced the same type of evidence that Trump himself found insufficient when coming from President Obama.

In the end, Maher concluded his rebuttal by dismissing Trump as “a man who, for a little extra publicity, will happily keep alive a debate over whether his family reunions are held at the zoo.”  The masterful takedown not only delivered a much-needed rebuttal to Trump’s preposterous lawsuit — it also poignantly highlighted the obviousness of Maher’s joke in the first place.  Maher’s appearance, a few days later, on Conan O’Brien’s late-night show made for some extra tasty icing on cake.

Obviously, This Is Why We Go to Law School

The real question here is not whether Maher will win the lawsuit.  (He obviously will.)  Rather, there are two questions that I think are worth asking.

First, how does the poor associate in Trump’s lawyer’s office explain to his family that this, this is what he spent three years and tens of thousands of dollars going to law school to achieve?

And second, how much money will Trump end up having to pay Maher for bringing an abusive lawsuit?  It will be interesting to see whether Maher’s attorneys pursue an anti-SLAPP motion.  (California’s anti-SLAPP would allow Maher the chance to force Trump to preemptively demonstrate the merits of his lawsuit — and, when he inevitably fails to do so, to recover the attorneys’ fees spent on the effort.)  Because if anyone in the history of ridiculous lawsuits deserves to pay penalties for acting like a monkey — it’s Donald Trump.

Iconic photographs capture an image and immortalize it.  Once seen, forever remembered.  Pictures worth a thousand words.  Other poignant clichés.  The point is, a photograph can take everything a historical moment symbolizes and preserve it for eternity — or at least until you accidentally throw out the pictures while moving, or maybe leave them unattended in your storage locker until you die.  (And if you haven’t seen the above photographs — other than the storage locker ones — stop reading this blog and look at them now or risk forever being a cultural ignoramus.)

Now think of a photograph of a little girl wearing a pink coat sitting on her father’s shoulders outside a church clutching a palm leaf.  Unless you spend a lot of time studying FBI manhunt posters, this photograph does not immediately spring to mind.  But it has one trait that the above photographs do not:  it was the subject of a recent lawsuit by its photographer against Sony Pictures, which used a photograph featuring a little girl wearing a pink coat sitting atop Eric McCormack’s shoulders in a television movie.  So, are these two photos “substantially similar,” such that the image on the right infringes the copyright in the image on the left?

According to Sony Pictures — and, now, the Boston-based federal Court of Appeals for the First Circuit — the answer is no.

Everyone Needs a Profession

The man in the original photograph is Christian Karl Gerhartsreiter, aka “Clark Rockefeller.”  He won (in)fame(y) as a “professional” imposter who pretended to be a rocket scientist, a Wall Street investment banker, and a descendant of British royalty before adopting the phony Rockefeller identity and presenting himself as a member of that famous clan.  (These days, Gerhartsreiter plays the role of a criminal defendant, on trial in Los Angeles for allegedly murdering his landlord in 1985.)  Donald Harney, a freelance photographer on assignment for a Boston newspaper, snapped the photo of Gerhartsreiter and his daughter as they emerged from a Palm Sunday service in 2007.

The following year, the fake Rockefeller abducted the girl during a custodial visit.  The FBI used Harney’s photograph in a “WANTED” poster.  Harney did not protest because he did not want to impede the search for the missing girl.  The case received a lot of media attention, and Gerhartsreiter was arrested a week later.  (The girl’s mother divorced Gerhartsreiter after discovering that he was, in fact, a con man and not a Rockefeller.  Don’t know if they write pre-nup clauses for that sort of thing.)  Harney licensed his photo to Vanity Fair and other publications.

Hollywood soon followed.  Not one to miss out on the opportunities presented by a good story, Sony made a television movie about Gerhartsreiter’s life and history of duping people called “Who is Clark Rockefeller?”  (I’ll give you three guesses for what network aired the movie.  Seriously, does anyone other than Lifetime do TV movies anymore?)  For the movie, Sony created its own version of the FBI poster, which — as the side-by-side above makes apparent — contains some familiar elements.  Both photographs show a little girl in a pink coat sitting on top of her father’s shoulders.  The pair is smiling and looking at the camera at roughly the same angle.  And Eric McCormack really nails that awkward German con man squinty grin.

Sony, however, made several significant changes.  Gone was the background of the gothic cathedral and blue sky; instead, Sony substituted a dark leafy tree.  Sony nixed the other religious symbols as well, such as the palm leaf in the daughter’s hand and the missalette (replaced with mere papers).  In the movie, the Sony image appeared in five scenes — illustrating the photo’s use during the manhunt — for a total of 42 seconds.

Sony Beats the Rap

We’re here, so of course, you know that Harney sued Sony and A&E Television Networks for copyright infringement.  The district court dismissed the case on grounds that the two photographs were not substantially similar, which is the sine qua non of a copyright infringement suit.

The Court of Appeals for the First Circuit agreed.  Though expressing sympathy for Harney, the court found that the elements of the photo which the defendants mimicked were not protectable, and hence not copyrightable.  Our regular readers may get tired of seeing it, but we never get tired of saying it:  copyright protection extends to an expression of an idea, not the idea itself, and the image of a child sitting on her father’s shoulders is just that.

Similarly, the court rejected as an idea the photographer’s efforts to claim protection for what the photograph symbolized — Gerhartsreiter’s deception.  Though the picture in its own way became iconic of the whole Clark Rockefeller sham, that was not the case when Harney clicked the shutter.  Later events cannot create copyrightable elements where none existed before.  In other words, art critics may recognize retroactive, accidental genius, but courts won’t recognize retroactive, accidental copyrightable expression.

Also factoring into the court’s decision was that Harney did not create the pose.  Unlike a staged photograph where the photographer positions his subjects (think Annie Leibovitz’s photograph of Cindy Crawford shaving k.d. Lang…and keep thinking about it), Harney merely happened upon the pair as they were walking from church.  The court found this to be the equivalent of discovering a “fact,” and facts are (say it with me) part of the public domain.

The court conceded that Harney’s photograph reflected a “distinctive aesthetic sensibility,” but held Sony didn’t copy the majority of the expressive elements of Harney’s photograph, such as the blue sky, composition of the church background and the Palm Sunday symbols.  Instead, Sony took the bare minimum needed to recreate the photograph to reflect its prominence in the manhunt.  While, as a practical matter, the pictures are undeniably visually similar, the only truly expressive element Sony adopted — the placing of the subjects in the center of the frame — was by itself not enough to render the two works substantially similar for purposes of copyright law.

The Impact of the Court’s Decision

The Sony decision raises important concerns that will affect the news and entertainment industries alike.

The Court essentially created a standard that affords less protection to spontaneous photography than to studio photography, notwithstanding the court’s recognition of the artistry that may be involved in the former.  Is this fair?  The news photographer still exercises his judgment as to what to shoot and how to light the photograph.  Moreover, the job is twice as hard because the photographer has only an instance to capture a moment and make it iconic.  Alfred Eisenstadt’s famed V-J Day in Times Square, in fact, was a spontaneous shot published in Life magazine.  Does this photograph warrant less protection than a Vogue cover that took ten hours to shoot?

This distinction may be more theoretical than real, given that many “news” photographs are often staged (like the time Life photographed a leopard “hunting” a baboon, when in fact, they brought the leopard there in a cage).

While it is easy to sympathize with Harney and other photographers reeling from the First Circuit’s opinion, the fact remains that news photographs play an important role in history, and studios that make movies about historical events need to be able to use the images.  The filmmaker has a couple of options:  either license the image or do what Sony did — recreate the photograph using as little as possible of the original.

At the same time, it is important to keep in mind that every jurisdiction has its own test for copyright infringement.  Federal courts in California might apply something called the “Extrinsic/Intrinsic” analysis, which is different from the Boston-based court’s “dissection” analysis.  A New York federal court would employ yet a third test, asking if an ordinary person viewing the two competing works and conclude they had the same “total look and feel?”  Under any of these tests, however, it seems likely that Sony would have prevailed:  the studio’s photograph lacks the excitement and aesthetic quality of the original, while the ominous green leaves and lack of sunshine convey a dark impression quite different from Harney’s overall effect of lightness and father-daughter bonding.  Later events and revelations turned Harney’s photograph into a metaphor, whereas Sony took a literal approach for the deception that was Clark Rockefeller.

But these sorts of variations in an ostensibly “federal law” are the just kind of thing that keeps lawyers in business, laypeople generally disgusted with the law, and curious readers coming back to this blog.  So perhaps we can conclude that the real winner in Sony Pictures’ case was, as usual, the lawyers.

Unless you live here, I’m assuming you’re aware of a little football game taking place this weekend between the San Francisco 49ers and the Baltimore Ravens.  (And maybe, just maybe, you might have heard something — but probably nothing original — about that whole Harbowl storyline.  Well here’s a little-known wrinkle about it.)

I’m as excited as anyone for the game, which is why, this Sunday, I might try to find a local bar hosting a Super Bowl party. But I’ll probably be out of luck, unless I’m willing to go to a “Big Game” party instead. And if I’m feeling spendthrift — the always-confusing word that sounds like “thrifty” but actually means “profligate” — I might try to pick up a new flat-screen TV at a Super Bowl sale. But unless I’m willing to settle for one of those ubiquitous “Big Game” sales, I’ll probably be forced to stick with what I’ve got.

Every year, while every sports yak in America is obsessing over Super Bowl scouting reports, every business in America is trying to capitalize on the game. But most of them aren’t using the words “Super Bowl” to do so, and the reason is fairly obvious: the phrase “Super Bowl” is trademarked by the NFL, which is famously protective of its intellectual property. Moreover, the privilege of using the phrase “Super Bowl” in advertising is one of the valuable rights bestowed by the NFL upon its advertisers and promotional partners — which gives the NFL extra incentive to keep freeloaders from poaching the phrase (thereby diminishing its value to potential paying promotional partners).

But what if the NFL is wrong? What if I really could check out the Super Bowl party at my favorite watering hole without them being subjected to the threat of legal doom?

Guess what, folks: I can.

The Legal Doctrine the NFL Doesn’t Want You to Know About

Unless you went to law school, you’ve probably never heard the phrase “nominative fair use” — and the NFL likes it that way (which is why I will probably have received a cease-and-desist letter from the NFL’s lawyers by the time you finish reading this post).

Most people have a general understanding of what a trademark is, even if they can’t put it into words. “Microsoft” is a trademark. “Mercedes Benz” is a trademark. “Fresca” is a trademark. (Let me help: a trademark is a limited property right in a particular word, phrase, or symbol that is used to identify an individual or company as the source of a given product or service.) And most people realize that companies have the power to block others from using their trademarks without permission. (For example, I probably can’t sell you a “Dell” computer that isn’t actually manufactured by Dell.) But that power, while broad, is not boundless.

Courts recognize that it’s virtually impossible to refer to particular products or services without using protected trademarks — how can I review the new Apple iPad without using the words “Apple” or “iPad”? That’s why the law allows the public to freely use a protected trademark nominatively, i.e., to describe the product or service underlying the mark, often in the only way that makes any sense. We lawyers call this idea the “nominative fair use” doctrine. And it applies even where the speaker’s goal in using the mark is to describe and promote its own products or services.

The Ninth Circuit (which covers California and much of the western United States) uses a three-part test for nominative fair use: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. And while the particular facts are always vital in any intellectual property dispute, most of our beleaguered “Big Game” companies could probably pass this test.

The Super Bowl is the Super Bowl. Sure, you could call it the “NFL Championship Game,” but the law doesn’t require you to go out of your way to make some oblique reference to something that is principally readily identifiable only by its trademarked name. For example, former Playboy Playmate Terri Welles successfully fended off a lawsuit brought by Playboy, which sought to block her from referring to herself on her website as a former “Playboy Playmate of the Year” (two trademarks in that phrase). Why? Because she was a former Playboy Playmate of the Year, and the law didn’t require her to refer to herself as “the Erstwhile Most Prominent Model for a Certain Well-Known Men’s Publication Featuring Highly Airbrushed Disrobed Ladies.” Similarly, generic boy band version 1.0 New Kids on the Block could not stop a group of newspapers from conducting surveys about which NKOTB member was the best and most popular (I vote Joey Mac!), because the newspapers were using the NKOTB trademark to describe the band’s services rather than their own, and because they couldn’t even ask the question in any meaningful way without using the “New Kids on the Block” mark. For the same reason, if a business wants to throw an event or a promotion that is themed around and coincides with the Super Bowl, it shouldn’t have to avoid using the only term that will clearly refer to the occasion. (After all, what if your idea of a big game party involves water buffalo?)

Which means that, as long as companies are careful in their advertising to respect factors 2 and 3 of the Ninth Circuit’s nominative fair use test — not using words like “official” that suggest NFL sponsorship or endorsement, avoiding the use of prominent logos or other NFL regalia, not making the words “Super Bowl” dwarf the name of their own product/service in size and/or prominence, and probably including a few decently prominent disclaimers (“this program/promotion is not in any way affiliated with or endorsed by the NFL or its teams”) for good measure — they can probably pass the nominative fair use test. In other words, throw a Super Bowl party, hold a Super Bowl sale, and dispense with this wink wink nudge nudge nonsense. And the case is even stronger for those who don’t want to go as far as tagging their event or promotion with the words “Super Bowl,” but simply convey factual information like, “We guarantee your new TV will arrive before the Super Bowl.” (At present, many retailers are too scared to say even that.)

So If It’s That Easy, Why Doesn’t Everybody Do It?

You may now be saying to yourself, “Unless this blogger is some kind of genius with never-before-heard-of legal insight [I’m not, but thank you], why isn’t everyone using the phrase ‘Super Bowl’ just like he says instead of cowering behind these ‘Big Game’ euphemisms?” Because sometimes, being legally right only matters if you can afford to prove it.

By most accounts, the NFL’s annual “Super Bowl” enforcement campaign doesn’t discriminate among business big and small, national and local, or even for-profit and non-profit. (Case in point: the Internet features several “how to” guides for churches that want to throw not-calling-them-Super Bowl parties without getting sued. But before you think the NFL is uniquely evil in this regard, remember that, in 1996, performing rights organization ASCAP sued the Girl Scouts for unlicensed jamboree sing-alongs. Which is to say, the NFL is non-uniquely evil.) And when it sends out its annual volley of aggressive cease-and-desist letters claiming egregious trademark infringement and irreparable harm, the NFL isn’t worried about nominative fair use doctrine because, at least to date, it hasn’t been worth anybody’s time and money to fight them on it.

If you’re a small business owner, you don’t have the time, the resources, or the inclination (especially the resources) to be the legal test case/martyr and fight the good fight for harassed business owners everywhere. It’s just easier to use some “Big Game”-like euphemism and spare yourself the headache. That’s no less true for the big guys who could afford to fight the NFL on the battleground of nominative fair use — it’s just cheaper and easier to use some phrase that, at least in the weeks immediately before the Super Bowl, consumers have been effectively trained to decipher well enough for the company to get its point across.

Of course, if the NFL had its way, these companies would even be denied the refuge of the “Big Game.” In 2006, the NFL tried to trademark the phrase “Big Game” too, finally dropping the effort only after Cal and Stanford politely reminded the NFL that the schools’ annual rivalry football game had borne that moniker for more than 100 years. That, and the fact that they were trying to trademark the phrase “Big Game,” for crying out loud.

(Analysis of whether the NFL would be effectively shooting itself in the foot by stamping out the free publicity and widespread excitement generated for their marquee event by all this ancillary corporate advertising is a topic for a business blog, not a legal blog. But for what it’s worth, my answer would be, “You’re damn right, they would be.”)

The Law Is What It Is…Unless It Is What I Say It Is

I could end the discussion there, and you would probably leave this post properly indignant about the NFL’s overreaching legal posture. But as I often say, if the law were that simple, I wouldn’t have a job.

Remember, consumer understanding (and confusion) are the core concern of trademark law — the test for trademark infringement is whether consumers are likely to be confused as to the source of a good or service bearing an allegedly infringing mark. And the NFL’s aggressive protection of its “Super Bowl” trademark is no secret. Because the NFL is so notoriously overprotective of that phrase, the general public may have been trained to believe that anything remotely commercial that actually uses the words “Super Bowl” is NFL-sponsored, sanctioned, or affiliated. In other words, because people’s assumptions and understandings have adapted to the NFL’s practices (even if those practices don’t reflect the actual law), the law may have functionally changed to match the NFL’s position because people who see “Super Bowl” in commercial settings might actually be confused about NFL affiliation (exactly the harm that trademark law is intended to prevent).

Did I just hear the distant sound of your mind being blown?

This fascinating paradox isn’t specific to the Super Bowl context. The same argument is sometimes raised with respect to the “culture of clearance” around major movie studios and networks. Studios and networks are known to clear (that is, get a license for) virtually everything that appears on screen, even things they probably don’t need to clear (particularly on the trademark side, which is, for reasons that don’t warrant discussion here, arguably less demanding in this context than copyright law). But many people know that studios and networks clear everything, so if they see a recognizable brand on screen, they might assume that it was cleared, or even that it was a paid product placement. So again, we have a potential risk of consumer confusion, which means the law may have functionally changed as a result of the major players’ widely-known business practices.

Of course, this is all purely theoretical — as far as I know, no one has ever tested these arguments in court, or even verified whether the type of consumer confusion I’m postulating here is real. But even if such confusion exists, there are compelling reasons why these arguments should not carry the day. Nominative fair use doctrine is rooted in First Amendment free speech principles. As a matter of policy, we probably don’t want to open the door to major corporations effectively undermining one of our holiest constitutional provisions by flexing their muscle via overzealous and arguably abusive demand letters that are (at least initially) contrary to the law. But the legal geek in me would love to see what would happen if these theories were ever actually tested in court.

Don’t Believe Everything You Read

Unfortunately, sloppy reporting (especially in the seemingly editor-less wilderness of the Internet) only perpetuates the confusion around these legal issues. It seems like every year, just as the airwaves are flooded with “championship game”-themed advertisements, the newswires are flooded with people trying to explain the proliferation of those oblique Super Bowl non-references. For instance, this time a couple years ago, Yahoo! Sports blog “Shutdown Corner” explained that retailers are wary of referencing the Super Bowl by name because “[t]he NFL is vigilant in protecting its copyrighted phrases,” but “blogs like Shutdown Corner [can] refer to the Super Bowl without penalty” because “[n]ews organizations are protected from copyright laws.”

Did you know that every time a reporter grossly misrepresents the law, somewhere, an overzealous lawyer gets a bonus? This reminds me of a game my fellow blogger Rachel Wilkes Barchie plays called “How many gross misstatements of the law can you find in one paragraph?” Let’s try to unwind this disaster in 5 sentences or less (advance warning: lawyers invariably use every page, every minute, every word they’re allowed):

Copyright law protects creative works of expression, not commercial names or pithy slogans, and the phrase “Super Bowl” is not — and cannot be — copyrighted. Trademark law protects commercial brand names, logos, slogans, and other elements that serve a source-identifying function in commerce, and you better believe the phrase “Super Bowl” is trademarked. News organizations are subject to copyright law (trademark law, too) but get somewhat extra latitude to use material subject to intellectual property protection thanks to the First Amendment. But for the reasons stated above, pretty much everyone else who follows certain common sense guidelines should probably be able use the phrase “Super Bowl” just as freely as dilettante bloggers. And finally, a pro-tip: if you’re looking for quality reporting on legal issues from non-legal outlets, look for the ones that quote me.

So this Sunday, enjoy your Super Bowl party — not your “Big Game” party — without fear or shame. I know I will.

Wait, WHAT?!  Does this mean that when I finish this blog, Colin is telling me I can’t celebrate by jumping up from my desk and kissing my beautiful biceps?  Have you seen my biceps?  It’s hard for me to look down at them and not kiss them!  It’s like I have Kate Beckinsale and Jessica Chastain staring up at me from each bicep, lips pursed, like some insane Popeye fever dream.

In my panic, I poured through the incomprehensibly large number of stories about this.  But then I had a thought.  No, not “What am I doing with my life?”  No, not even “What is everyone at ESPN doing with their lives?”  No, my thought was “Wait wait… I’m a lawyer, damn it!  I actually know what all of this means!  These guys don’t!”

What’s in a Trademark?

You see, there are times when being a lawyer is like being a sci-fi nerd.  No, not just because girls flinch upon seeing us…  Where a sci fi nerd may get mad that you don’t know that those cool big four-legged walky things in The Empire Strikes Back can be called either an Imperial Walker OR an AT-AT (short for All-Terrain Armored Transports, not to be confused with those cool little two-legged walky things in Return of the Jedi, which are called AT-STs, or All-Terrain Scout Transports…idiot), I often find myself peeved at laymen’s misunderstanding of intellectual property law.  Someone will give someone a funny nickname at a party and follow it up with “you should totally copyright that!”  And I’ll shout “Excuse me!  According to U.S. copyright law, you can’t copyright a short phrase!  In fact, judging by the context, I’m pretty sure you mean that you should ‘trademark’ that, but what does that even mean?  You can’t actually ‘trademark’ something!  You can file an application for registration with United States Patent and Trademark Office and assuming you specify the proper goods and services and submit a proper specimen of use and pay the requisite fees and don’t receive an office action from the USPTO Examining Attorney or an opposition from a third party, you may be issued a registration.  But is that really what you want to go through for that stupid nickname?!  Hey, wait a minute, where’s everyone going?  Come back!”  (See, there’s a reason I don’t get invited anywhere by anyone.  Ever.)

Regardless (or “Irregardless” for you Raiders fans), listening to or reading a sports reporter’s take on trademark law is like Bill Walsh listening to me try to explain the complexities of the pistol formation.  Here’s the thing:  Colin Kaepernick is in no way going to be able to prevent you, me, Alex Smith, Ray Lewis, the Harbaugh Brothers, or any member of the Lingerie Football League’s Seattle Mist from kissing their biceps.  In fact, as applied for, Colin’s application, if it eventually becomes a registration, will only prevent you from the following VERY limited activity:  advertising and selling clothing making use of the word KAEPERNICKING as a brand.  That’s it.  Nothing more.

You see, Colin’s application only covered the word KAEPERNICKING, not the actual celebration.  In addition, in his application, he’s only claiming the exclusive right to use that word in connection with clothing — following the recent trend of athletes attempting to secure their nicknames for clothing (see TEBOWING and LINSANITY).  In fact, he actually applied for several other marks that didn’t get as much publicity:  KAEPERNICK7, KAEPERNICK CK7, KAP7, KAP, and, creatively, COLIN KAEPERNICK.

As much as can be forcibly read into this story by the easily-excitable Skip Bayless (who just so happens to not only be a frat bro of mine, but we also attended the same sports powerhouse), it’s really not a big deal.  Due to the fact that his “trademark” is just a version of his name, he likely wouldn’t need a registration to protect himself — he’s got right of publicity laws on his side.  He probably filed the applications simply because it’s common for unscrupulous types to file trademark applications for terms associated with famous people as soon as those terms get hot:  see BLUE IVY CARTER and LINSANITY.  Having an application on hand will make it easier to shoo those imposters aside.

Will It Even Work?

Of course, as you may have noticed from my room-clearing screed above, just because Kaepernick applies for trademark protection doesn’t mean he’s going to get it.  In fact, given the nature of the marks for which he’s claiming protection, Kaepernick and his lawyers are going to have a lot of e- paperwork in front of them.

• All of Colin’s applications for marks which include his last name (i.e. KAEPERNICKING, KAEPERNICK7, and KAEPERNICK CK7) are likely to be initially refused by the USPTO because the marks consist of a word that is “primarily merely a surname.”  The USPTO will only allow a registration of a last name as a trademark if the applicant can prove “acquired distinctiveness,” indicating that the public now associates that surname with this particular applicant’s goods/services.  Colin may be able to prove that due to his recent rocket flight to stardom.

• Colin’s application for COLIN KAEPERNICK is going to be initially refused by the USPTO because in order to acquire a registration for mark that identifies a particular living individual, the written consent of that individual must be on record.  The USPTO doesn’t want someone’s name to be co-opted by some random third party.  Colin will be able to easily overcome this refusal by submitting a short written statement showing his consent.

• Colin’s application for KAP will almost assuredly be rejected.  While we may recognize that in this instance, KAP is a flawed attempt at shortening KAEPERNICK (shouldn’t it be KAEP?), the problem is that he’s trying to protect it in connection with clothing, which includes hats.  “Cap” is a word used to generically describe hats and, under the law, no one can claim exclusive rights in a generic word.  The fact that it’s misspelled doesn’t help things.  For the purposes of analyzing the generic or descriptive nature of a word, a misspelling is treated the same as the proper spelling.  I think Colin’s going to have much better luck against the Raven’s defense than he is on getting past this refusal.

But Let’s Focus on What’s Really Important

Brain-addling trademark law minutia aside, the point of this overly-angry and uninteresting missive is to convey the fact that trademark rights, at least in the U.S., are limited in scope.  The main purpose is to allow someone to protect a word, logo or slogan (or, in more complex cases, a sound, shape, color or even smell) as it is used on particular goods or services offered by that person or company.  The protection extends only to that particular word as used on those particular goods (except in limited circumstances).  A trademark registration does not allow the trademark registrant to prevent anyone from ever using that word in a sentence ever again.  It certainly doesn’t allow for the prevention of a certain unoriginal touchdown celebration (I miss the good ol’ days).

But you know, when it comes down to it, I really don’t care.  I’m bitter.  Not just because I’m a lawyer but because I’m a long suffering San Diego Chargers fan.  I LOVE the guy, but I don’t think RIVERSING is going to take off any time soon.  At least I can now go back to what’s really important:  the Manti Te’o story.  I’m eagerly awaiting the day (coming soon) when we see a trademark application for the next big sports fad:  TE’OING.

For starters, there are the Sacramento Kings’ fans, who fully appreciate the irony of Seattle trying to poach an existing team while still bemoaning the fact that their Sonics team got poached by Oklahoma City.  Rest assured that Kings fans will stop at nothing to keep the team in “Cowbell Kingdom,” if for no other reason than to continue persisting in their ridiculous fantasy that a “rivalry” exists between the Kings and the Lakers.  (Of course, what’s really going on is an all-too-obvious ploy to support the struggling cowbell industry, which the rest of America — except for maybe The Bruce Dickinson — will just never understand).  Leading the Cowbell Kingdom movement is former Phoenix Suns superstar and now-mayor of Sacramento, Kevin Johnson, who not only has a political science degree from U.C. Berkley, but also blew my 12-year-old mind back in 1994 when he posterized Hakeem Olajuwon.

Just one day after this week’s announcement of the sale, mayor KJ warned Seattle fans:  “Don’t celebrate too early.”  Because if KJ gets his way, the Kings will be staying in Sacramento (and the cowbell industry will be saved).  Such a result would not only devastate the hopes and dreams of Seattle NBA fans, but would also totally obviate all of the hypothetical legal stuff I may or may not eventually get around to discussing later in this article.

KJ’s Plan

KJ’s “Playing to Win” plan has four steps, none of which apparently require the use of complete sentences:  (1) identify local ownership group; (2) identify major equity partner; (3) demonstrate City’s commitment to partner on new downtown arena; (4) demonstrate viability and strength of the Sacramento market.  KJ has also located a prominent Sacramento law firm that is willing to get paid entirely in cowbells work on a pro bono basis to help keep the team in town.

In order to keep the Kings in Sacramento, KJ must ultimately convince the NBA board of governors to reject the proposed sale and relocation plan.  According to the Sacramento Bee (a far more trusted news source than the Cowbell Herald), the Maloofs have a binding agreement with the Seattle-based investors, which would mean that the Maloofs would not be able to change their minds about who to sell to unless the NBA rejects the sale (or the Maloofs want to breach their contract).  According to Fox Sports, however, the “Maloofs are still allowed to receive other offers until the league approves the sale….”  Meanwhile, other observers are speculating that the Kings’ minority owners may have a right to match the Seattle group’s offer — and that, even if the current minority owners are unwilling or unable to do so, new cowbell-loving partners (including business magnate/part-owner of the Pittsburgh Penguins Ron Burkle) could step in and exercise that right by taking over a 7% stake in the franchise that is currently available via bankruptcy auction.

In any event, the NBA board of governors will reportedly meet in New York in mid-April.  At that time, the board of governors will probably hear a relocation pitch from the Maloofs and the Seattle-based investors, as well as a counter-offer from KJ.  KJ’s counteroffer will likely include a summary of his four-point plan (no reports on the anticipated use of complete sentences), and hopefully some additional footage of him posterizing Hakeem Olajuwon.  Hopefully, KJ will have the good sense not to show the board of governors the Bubble Gum Bandits’ corny music video, which supports keeping the Kings in Sac-town.

Legal Challenges

Even if the Kings-to-Seattle move is approved by the NBA, and isn’t scuttled from within the Kings ownership group, two lawsuits threaten the construction of a new 700,000 square feet arena in Seattle.  According to the Seattle Times, the first lawsuit deals with a Washington State Initiative that requires the city to make a profit on any investment in a sports facility.  The second lawsuit seeks to void the contract because the investors failed to complete an environmental impact report and because nonindustrial traffic and development in the “Sodo” area would impair cargo movement.

Although we California lawyers can normally predict the outcome of lawsuits with absolute certainty* these lawsuits are different because they involve topics like the impairment of cargo movement — which, when rigorously analyzed, immediately force us to either take a nap or think of something more interesting before we can complete our analysis.

Even if these lawsuits are defeated, the new arena wouldn’t be ready for at least a few years — which would mean that the team would be back in the aging KeyArena.  Unfortunately, KeyArena is already booked with numerous exciting events such as Seattle University men’s basketball games, WNBA Storm games, Pac-12 Women’s college basketball tournament games, various musical concerts, and last but not least, “Rat City Rollergirls” games.  This means that instead of watching DeMarcus Cousins, Tyreke Evans and Jimmer Fredette, Seattle fans might just get to keep watching the “Throttle Rockets” versus “Sockit Wenches.”

Since I only go to Seattle to visit family and Pike Place Market, you might assume I have no dog in this fight.  But given that (1) as a Laker fan, I must constantly endure Kings fans bringing up the “rivalry” we all know never existed, and (2) I feel dated whenever I listen to Ice Cube’s “It Was a Good Day,” I would actually like to see this move happen.

But, as a German train-ticket collector once told a professor of mine when told by the professor that he was going to a certain city in Germany:  “We shall see.”

* Disclaimer:  This statement is not actually true.

“I have a dream that my four little children will one day live in a nation where they will not be judged by the color of their skin, but by the content of their character.”

These words will be heard many times this week as we celebrate the birthday of Rev. Dr. Martin Luther King, Jr. They are, of course, from King’s famous 1963 “I Have a Dream” speech. But as you celebrate his life and listen to his words, ask yourself this question: have you ever heard the whole speech? Not just the key excerpts that will be repeatedly broadcast on the news, but the entire, seventeen-minute address as it was given to a crowd of 200,000 in front of the Lincoln Memorial?

Ever wonder why it’s not shown on TV more often?

The answer, my friends, is copyright. Because while Dr. King may have dreamed of a world without racism, even he wouldn’t dare to dream of a world without lawsuits.

Yes, in addition to being a noted clergyman and civil rights leader, Dr. King was a copyright litigant.

Shortly after his “I Have a Dream” speech was delivered in August 1963, King moved for a preliminary injunction preventing record companies from selling copies of the speech.  The defendants, Mister Maestro, Inc. and 20^th Century-Fox Records argued that, because King had distributed advance copies of the speech to the press without restricting them from reproducing or distributing it further (and without the copyright notice required under copyright law at the time), the speech was in the public domain.

(To those of you who thought that it was only Dr. King’s estate that was concerned about protecting rights in the “I Have a Dream Speech,” and that King himself would have gladly dedicated it to the public, not so:   King declared in the Mister Maestro case that “he did not intend his speech ‘to be generally distributed or generally made available to the public at large’ but to be ‘specifically limited in use to assisting the press coverage of the March by the press.’”  As a legal matter, King’s intent was irrelevant to the issue of whether there was a publication without notice, but his testimony is an interesting glimpse into his thoughts about copyright protection.)

The Mister Maestro court noted that, under the 1909 Copyright Act, while the “general publication” of a copyrighted work without the appropriate copyright notice would result in the copyright being forfeited, a “limited publication” would not.

What’s the difference? Well, a general publication occurred when a copyrighted work was made available to members of the public at large, without regard to their identity or what they intended to do with the work. A limited publication, on the other hand, was one that communicated the work to a select group for a limited purpose, without any right to further distribute it.

Of course, that distinction is no longer relevant under the 1976 Copyright Act that governs copyrighted works created in the last 30+ years. But the 60s were a crazy time for this country, a time of great change and confusion, a time when a lunch counter could refuse to serve you on the basis of your skin color, and a time when a speech delivered to 200,000 people and broadcast to millions more was not, legally speaking, a publication to the “public at large.” (And you thought the drug culture was wild back then!) Under the 1909 Act, the oral delivery of a speech, just like the broadcast of a television script or the public performance of a song, did not constitute a general publication. The distribution of copies of the speech, on the other hand (which King had done in the press tent) was considered a publication which would divest the copyright, unless it was sufficiently limited. The court in Mister Maestro held that there was nothing to suggest that copies of King’s speech had been offered to the public at large (even though King had placed no restrictions preventing the press from doing just that). Result: copyright saved, injunction granted.

The same issue was litigated more than 30 years later. King’s estate sued CBS, which had produced a documentary containing 60% of his “Dream” speech. Because Mister Maestro was a district-level case from New York, it was not binding on the CBS district court sitting in Atlanta. CBS brought a summary judgment motion to establish that the speech was in the public domain. This time, the district court determined that the circumstances under which King delivered, reproduced and disseminated the speech constituted a general publication, divesting King of his copyright. (Somehow, even in the 1990s, the northern and southern states could still find ways to disagree about Dr. King.) But the Eleventh Circuit Court of Appeals later reversed, holding that CBS had not adequately established that Dr. King engaged in a general publication of his speech, and the parties later settled the case. Once again, King’s copyright was saved. (Good thing they didn’t litigate in Arizona, I guess.)

The King estate has, in the ensuing years, been vigilant in protecting the rights it claims in the “I Have a Dream” speech. In 2009, CNN obtained a license from the King estate to air the speech in its entirety on Dr. Martin Luther King Jr. Day. Other radio and TV outlets were left to play only short excerpts, which are protected under copyright’s “fair use” doctrine.

Interestingly, one place you can find the complete speech is on YouTube. These uploads are no doubt posted without the King estate’s permission, although at least one of them has amassed over 10 million hits in the past four years, suggesting that the estate has not sent a takedown notice under the DMCA. But just in case, we’re not going to be the ones to link to it. You’re grown-ups, you can find YouTube yourselves.

So as you enjoy the long weekend ahead of us, take some time to sit back, reflect, and really honor Dr. King’s memory in a way he would recognize and appreciate: read a case on copyright law and try extra hard not to infringe any copyrights. I’m sure the good doctor would appreciate it.

Last week, I wrote that while talent manager Rick Siegel’s legal war with his former client — which had since morphed into a crusade against California’s Talent Agencies Act writ large — was over, the fight had been taken up by Siegel’s colleagues at the National Conference of Personal Managers, which, in November 2012, brought a direct constitutional challenge against the Talent Agencies Act in federal court.  As part of my preview of the case, I noted that the case “may still be a long shot — anytime someone tries to claim that a law violates the Thirteenth Amendment’s prohibition on slavery, you have to raise your eyebrows a little.”  But this week, I received a reader correction from Mr. Siegel himself, who writes:

Ken,

The 13th Amendment claim isn’t about slavery.

The 13th Amendment of the United States Constitution states in part:  “Neither slavery nor involuntary servitude, except as a punishment for crime whereof the party shall have been duly convicted, shall exist within the United States, or any place subject to their jurisdiction.”

So to be constitutionally compliant, the benefit of one’s labor can only be voided should there exist: (1) a statute stating that such labor was criminal; and (2) a finding been forfeited must have been found duly convicted of that crime.  Every other California occupational licensing scheme where one loses the right to contract has statutory notice that the unlicensed engagement of activity is a criminal offense and makes that engagement either misdemeanor or felony, the TAA expressly states that per § 1700.44(b) that no TAA violation can be considered criminal.  As the action can’t be seen as criminal, the penalty violates the 13th Amendment.

The original post has been revised to refer to “involuntary servitude” instead of slavery.  Lawyers for the State of California, the Association of Talent Agencies, and celebrities who just like being able to not pay their estranged personal managers may, of course, disagree with Mr. Siegel’s interpretation of the Thirteenth Amendment, but let it never be said that Law Law Land doesn’t strive to be fair and precise in its snark.

As for me, I’m just psyched to have gotten (politely) called out by a celebrity of recent history in California law.  Can’t wait for Kim Kardashian to email the blog next!