Wednesday, November 30, 2005

“Survivor” Survives Trademark Infringement Suit Brought by Beach-Themed Product Creator

The company behind Surfvivor, a trademark for beach-themed products, sued the creators of the reality television show “Survivor” for trademark infringement. Despite the confusion reported by Surfvivor that some entities had in the marketplace, the Federal District Court granted summary judgment in favor of “Survivor” and dismissed the case. The Court found that the marks were not similar enough to cause consumer confusion.

Surfvivor appealed immediately, but its action did not survive for long. The Court of Appeals affirmed the District Court’s ruling. The Court of Appeal based its opinion on two strands of thought. First, the Court concluded that no actual confusion existed between the two trademarks. If nearly all of the customers and retailers had no confusion, then “customers were not likely to associate the two products or conclude [they] came from the same source.”

Second, the Court reasoned that Surfvivor did not suffer any damages. For example, no merchants stopped doing business with Surfvivor due to any confusion.

Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 2005 U.S.App.LEXIS 7688 (9th Cir. 2005).

Right of Publicity Does Not Cover the Same Subject Matter as Copyright

A model, June Toney, signed a contract for her photo to be used by Ultra Sheen Supreme Shampoo. The contract ended in November 2005, but Ultra Sheen continued to use Toney’s photo. Toney brought suit under an Illinois right of publicity statute.

The Federal District Court dismissed her suit based on a section of the Federal Copyright Act that preempts state law claims if the subject matter is covered under the Copyright Act itself. The Court of Appeals affirmed the dismissal.

But Toney was not through. She petitioned the Court of Appeals for a rehearing and the Court reversed its previous ruling. The Court reasoned that the Illinois statute protects a person’s “identity,” while the Copyright Act applies to creative works that are fixed in a tangible medium. The Court wrote, “Toney’s identity is not fixed in a tangible medium of expression.” The subject matter was not the same, and therefore not covered under the Copyright Act.

Furthermore, the Court found another distinction. The Illinois statute protects the right to control the commercial value of a person’s identity. The Copyright Act, in contrast, protects the right to reproduce and perform works.

The case was remanded to the District Court to proceed on the right of publicity claim.

Toney v. L’Oreal USA, Inc., 406 F.3d 905, 2005 U.S.App.LEXIS 7897 (7th Cir. 2005).

Friday, November 18, 2005

“Wife Swap” Producer May Proceed with Copyright Infringement Claim Against “Trading Spouses”

RDF Media produced a reality television show called “Wife Swap” that was aired on ABC in May 2004. Shortly after its airing, Fox Broadcasting ran a similar show called “Trading Spouses.” RDF brought suit based on two claims: copyright and trade dress infringement. Fox filed a motion to dismiss all of RDF’s claims.

In response to Fox’s motion, the Federal District Court Judge dismissed RDF’s trade dress claim because a television show itself could not be a trademark. The Court reasoned, “Trademark is concerned with the protection of symbols or elements; it does not protect the content of a creative work of artistic expression as a trademark for itself.”

RDG’s copyright claim withstood Fox’s motion to dismiss. RDF had filed the complaint before all of its episodes had been registered with the Copyright Office. The Court concluded that because the errant registrations were filed by the time the motion was heard no basis existed for dismissing the copyright claim.

RDF Media Limited v. Fox Broadcasting Company, 372 F. Supp.2d 556, 2005 U.S.Dist.LEXIS 12923 (C.D.Cal. 2005).

San Francisco’s Film Art’s Foundation to offer Self Defense Seminar December 10

Writers, directors, and producers must understand their legal rights and how to defend themselves against exploitation by production and distribution companies. In this intensive seminar, filmmakers learn how to anticipate problems before they arise in negotiations and create incentives that encourage companies to live up to their agreements, including performance incentives, default penalties, and arbitration clauses. In the event of an un-resolvable dispute, participants learn what remedies are available to enforce their rights.

Mark Litwak is a veteran entertainment attorney with offices in Beverly Hills, California. He writes a monthly syndicated column that appears on the Film Arts Web site as "The Litwak Files," and is the author of six books, including Reel Power, The Struggle for Influence and Success in the New Hollywood, Courtroom Crusaders, Dealmaking in the Film and Television Industry (winner of the 1995 Krazna-Krausz Book Award), Contracts for the Film and Television Industry, and Risky Business. He is the author of the popular CD-ROM program Movie Magic Contracts. In addition, Litwak is a producer's rep, assisting filmmakers in the financing, marketing and distribution of their films.

Self-Defense for Independent Filmmakers: Protecting Your Legal Rights
Sat Dec 10th from 9:00 AM to 5:00 PM

$95/Filmmaker-level members; $145/others.
Film Arts Foundation
145 9th Street, #101
San Francisco, CA, 94103

Call (415) 552-8760 to sign up or for questions or email

Monday, November 07, 2005


The Puerto Rico chapter of the National Association of Latino Independent Producers Association (NALIP), in conjunction with the San Juan Cinemafest and the Puerto Rico Film Corporation, will sponsor a full day of free panels on feature film pitching, finance, and distribution for indie filmmakers, beginning at 10 a.m. on Thursday, November 10, at the Normandie Hotel in San Juan, according to Frances Lausell, president of NALIP-PR.

Participants will include NALIP Executive Director and independent producer Kathryn Galán, veteran entertainment attorney and producers’ representative Mark Litwak, long-time personal manager and award-winning producer Marilyn Atlas, financing executive Pamela Peak, and Venevisión International Film and Theater Division Manager Julio Noriega.

Kathryn Galán has established NALIP as the preeminent national Latino media organization in the U.S., dedicated to increasing the quality and quantity of Latino/a film, television and documentary projects by supporting Latino/a writers, producers, directors and creative talent and advocating on their behalf. NALIP runs regional programs plus four national Signature programs: the Latino Writers Lab™ held in New York each spring and Santa Monica, California each fall; the intensive 10-day Latino Producers Academy™ held in Tucson, Arizona each summer; a national Conference that welcomes over 600 makers and funders each spring, and the Latino Media Resource Guide™, the go-to source for information on Latino directors, writers, producers, craftspersons, funders, diversity opportunities, distributors, and film programs.

Mark Litwak’s entertainment law practice includes work in the areas of copyright, trademark, contract, multimedia law, intellectual property, and book publishing (“Dealmaking in the Film and Television Industry,” “Risky Business: Financing and Distribution of Independent Film”). As a producers’ rep, Litwak assists filmmakers in the marketing and distribution of their films through such renowned film festivals as Cannes, Toronto, Telluride, and others. At this year’s Sundance Film Festival, three of his clients had films acquired for distribution: HUSTLE & FLOW, which won the Audience Award (Paramount), THE MATADOR (Miramax), and MARILYN HOTCHKISS BALLROOM DANCING AND CHARM SCHOOL (Goldwyn).

Equally at home in the worlds of film, television, and live theater, Marilyn Atlas is a founding member of Women in Film’s Luminas Committee, which supports the portrayal of women in non-stereotypical roles in film and television, and is committed to finding projects that reflect diversity and non-stereotypical characters. Among her credits as a film producer are REAL WOMEN HAVE CURVES for HBO, which won the Audience Award at the Sundance Film Festival, A CERTAIN DESIRE, starring Sam Waterston, and ECHOES, which won the Gold Award at the Texas International Film Festival.

Julio Noriega heads up the film and theatrical division for Venevisión International, which over the past 30 years has been one of the most important providers of Spanish language programming for Latin America and the world, positioning its productions in more than 20 languages and currently reaching 97% of the entire U.S. Latino population, thanks to its association with Univisión Communications.

“NALIP-PR’s mission is to help develop and expand Puerto Rico’s film industry and film community,” said Lausell. “By organizing activities such as this one, we hope to provide an opportunity for local filmmakers to obtain practical information directly from working professionals in the industry, as well as a giving them a chance to network and establish contacts which could prove of great value in the future.”

Contact: Frances Lausell
Phone: 787-268-0063
Cell Phone: 787-640-5290

Mark Litwak's book "Dealmaking in the Film and Television Industry, 2nd Edition" has been republished in Korea by Easy Books. We have a limited number of these books for sale at $25 plus shipping. Call (310) 859 9595 if you would like to purchase one.

Dealmaking is the first self-defense book for everyone working in the film and television industry, addressing a general, non-attorney readership, it is a fascinating, highly accessible and practical guide to current entertainment law peculiarities and "creative" practices. Armed with this book, filmmakers can save themselves thousands of dollars in legal fees as they navigate the entertainment business's shark-infested waters. Whether you are a professional or wannabe producer, writer, director, or actor, this book can help you make the most of your business dealings while steering you clear of contractual traps. The second edition of this popular book contains hundreds of updates and revisions of the first edition and includes two new chapters: Legal Remedies and Retaining Attorneys, Agents, and Managers.