Don Henley et al v. Charles S Devore et al

Filing 76

REPLY in support of MOTION for Summary Judgment as to or, in the Alternative, Partial Summary Judgment as to each Cause of Action in Plaintiffs' First Amended Complaint 51 filed by Defendants Charles S Devore, Justin Hart, Counter Claimants Charles S Devore, Justin Hart. (Arledge, Christopher)

Don Henley et al v. Charles S Devore et al

Doc. 76

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Christopher W. Arledge (Bar No. 200767) [e-mail] John Tehranian (Bar No. 211616) [e-mail] ONE LLP 4000 MacArthur Boulevard West Tower, Suite 1100 Newport Beach, California 92660 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants Charles S. DeVore and Justin Hart UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA DON HENLEY, MIKE CAMPBELL, and DANNY KORTCHMAR Plaintiffs, v. CHARLES S. DEVORE and JUSTIN HART, Defendants. AND RELATED COUNTERCLAIMS Case No. SACV09-0481 JVS (RNBx) Hon. James V. Selna DEFENDANTS' REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT AS TO EACH CAUSE OF ACTION IN PLAINTIFFS' FIRST AMENDED COMPLAINT Date: June 1, 2010 Time: 10:00 a.m. Courtroom: 10C

16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT
Dockets.Justia.com

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
16783.1

TABLE OF CONTENTS I. II. INTRODUCTION........................................................................................................1 DEFENDANTS' VIDEOS ARE PROTECTED BY THE FAIR USE DOCTRINE..................................................................................................................1 A. Defendants' videos are parodic and transformative, and the first fair use factor therefore weighs in defendants' favor.........................................1 1. 2. 3. B. III. IV. Plaintiffs' efforts to undercut the factual support for Defendants' argument is irrelevant...............................................................................1 Plaintiffs' arguments about Defendants' intent are irrelevant and could not be accepted at summary judgment in any event................4 Plaintiffs misunderstand how directly and in what direction a parody must aim....................................................................................6 The fourth fair use factor favors Defendants....................................................10 HENLEY IS NOT ENTITLED TO QUASI-COPYRIGHT PROTECTION UNDER THE LANHAM ACT..................................................................................12 CONCLUSION...........................................................................................................15

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

i

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
16783.1

TABLE OF AUTHORITIES Cases Bourne Co. v. Twentieth Century Fox Film Corp., 602 F.Supp.2d 499, 507 (S.D.N.Y. 2009) .......................................................................... 3 Burnett v. Twentieth Century Fox Film Corp., 491 F.Supp.2d 962, 967-969 (C.D.Cal. 2007).................................................................... 7 Butler v. Target Corp., 323 F.Supp.2d 1052 (C.D. Cal. 2004) .............................................................................. 13 Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 970 (10th Cir. 1996) ..................................................................................... 14 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979).............................................................................................. 12 Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir. 1997).................................................................................... 2 Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1568 (S.D. Cal. 1996).......................................................................... 7 EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir. 2000).......................................................................................... 13 New York Times Co. v. Sullivan, 376 U.S. 254, 271 (1964).................................................................................................... 3 Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001)................................................................................................ 14 Salinger v. Colting, 641 F.Supp.2d 250, 262 (S.D.N.Y. 2009) .......................................................................... 7 Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1106 (9th Cir. 1992) ................................................................................. 12

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

ii

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

White v. Samsung Elecs. Am., Inc., 989 F.2d 1512 (9th Cir.1993) ........................................................................................... 14 White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992)............................................................................................ 14 Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110, 1119-1120 (9th Cir. 2000) ........................................................................ 10

16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

iii

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

I.

INTRODUCTION This is Defendants' third brief on the issues in the parties' cross motions for

summary judgment. By now, many of the issues have been adequately fleshed out in other papers, and it is unnecessary to address every argument in Plaintiffs' Opposition. So Defendants focus on three primary issues here. The first, and probably the most important, is whether Defendants' videos are transformative. They are, and Defendants show below that all of Plaintiffs' arguments to the contrary are lacking. Second, Defendants show that the videos do not harm the value of the underlying copyrights and, therefore, do not undercut the purpose of copyright law, which is to allow authors to benefit from their creations in order to encourage the creation and dissemination of creative works. Plaintiffs' argument, that there could be some hypothetical harm in a future, hypothetical market is insufficient to avoid summary judgment. Finally, Plaintiffs are unable to identify any legal authority that could support a false endorsement claim under these facts. Henley wants to extend the Lanham Act to offer quasi-copyright protection so he can control even the use of compositions that he does not own. The law will not permit it. II. A. DEFENDANTS' VIDEOS ARE PROTECTED BY THE FAIR USE DOCTRINE Defendants' videos are parodic and transformative, and the first fair use factor therefore weighs in defendants' favor

The crux of this dispute is, and always has been, whether Defendants' videos are transformative works entitled to protection as fair use. The question for this Court is whether a reasonable person could perceive in Defendants' videos some commentary or criticism of the original works or of Don Henley. Because a reasonable person could do so, the first fair use factor weighs heavily in Defendants' favor. Plaintiffs raise three primary arguments for why the works are not parodic, but all of these arguments fail. 1. Plaintiffs' efforts to undercut the factual support for Defendants' argument is irrelevant Plaintiffs' core contention is that Defendants are factually wrong: wrong about the meaning of Plaintiffs' original songs, and wrong about Henley's status as a liberal icon. 16783.1 1
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

The Boys of Summer, they say, is "a nostalgic song about a summer romance" not a political or social statement. Plaintiffs' Opposition at 3-4. And All She Wants to Do Is Dance is not a critique of American policy; the argument that it is being mere "fiction" that was "rejected" by Kortchmar and Henley. Id. Moreover, Henley is not an icon of entertainment liberalism; he does not accept that he is "liberal" and he even sometimes support Republican candidates for office. See Supplemental Declaration of Don Henley. Thus, Plaintiffs say, Defendants lack factual support for their parody argument. What Plaintiffs argue, then, is that Defendants must lose because their statements about Don Henley and his works are not true. But if, as Plaintiffs allege, any factual weakness in Defendants' argument undercuts their fair use defense, then the converse must also be true: if Defendants' argument is factually accurate it is more compelling and more worthy of a possible fair use defense. That is, under Plaintiffs' logic, if Defendants rightly interpreted the original works--if The Boys of Summer really were a political statement and if All She Wants to Do Is Dance really were a critique of American foreign policy-- and if they rightly understood Don Henley as being an outspoken, liberal icon, then Defendants' arguments might have some merit. Under this approach, the fair use defense rises or falls on the truth of Defendants' message. Of all the arguments Plaintiffs make in this case, this is probably the most pernicious, because its adoption by this--or any other--Court would undercut a settled and important understanding of the First Amendment. "Parody is regarded as a form of social and literary criticism, having a socially significant value as free speech under the First Amendment." Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir. 1997). Plaintiffs contend, in part, that because Defendants are wrong about the meaning of the original songs, Defendants' works are not protected parodies. But Plaintiffs' argument undercuts everything we know about the First Amendment and protected speech. "Authoritative interpretations of the First Amendment guarantees have consistently refused to recognize an exception for any test of truth-whether administered by judges, juries, or administrative officials-and especially one that puts the 16783.1 2
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

burden of proving truth on the speaker. The constitutional protection does not turn upon `the truth, popularity, or social utility of the ideas and beliefs which are offered.'" New York Times Co. v. Sullivan, 376 U.S. 254, 271 (1964). Defendants might be wrong about the meanings of the original songs. They might be wrong about Henley being an icon of the liberal, entertainment elite. But Plaintiffs' assertions that Defendants are wrong about these things can never serve as the basis for concluding that Defendants' works are not entitled to First Amendment protection. Indeed, the Supreme Court has made clear that courts are not tasked with determining whether the parody's criticisms have merit. In Campbell, the judges at various levels came to differing opinions on whether 2 Live Crew's song even contained criticism of or commentary on Roy Orbison's Pretty Woman, much less what the criticism was. According to the district court, 2 Live Crew's song criticized Orbison's original as being "bland and banal." Campbel v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994). The intermediate appellate judges were less sure. One Court of Appeal judge believed the parody "ridicule[d] the white-bread original." Id. The other members of the panel, however, "had trouble discerning any criticism of the original in 2 Live Crew's song." Id. The Supreme Court majority found that the parody's lyrics "can be taken as a comment on the naivete of the original of an earlier day...." Id. at 583. Thus, the various judges who reviewed 2 Live Crew's alleged parody were not unanimous in their understanding of the work. But the disagreement was not problematic because 2 Live Crew was not required to prove the accuracy of their commentary. They were not forced to prove that Orbison's original really was "bland," "banal," "naïve," or anything else. And--most importantly-- Orbison could not avoid a finding of fair use simply by filing a declaration stating that 2 Live Crew's interpretation of his original was mistaken or inaccurate. Orbison and 2 Live Crew undoubtedly disagreed about the value of Orbison's song, the meaning of its lyrics, and the value of 2 Live Crew's commentary. But none of that mattered. The issue was simply "whether a parodic character may reasonably be perceived." Id. at 582; see also Bourne Co. v. Twentieth Century Fox Film Corp., 602 F.Supp.2d 499, 507 (S.D.N.Y. 2009) 16783.1 3
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

(The television show Family Guy included the song, "I Need a Jew," which was allegedly a parody of the song "When You Wish Upon A Star." Defendants argued that the parody was based in part on Walt Disney's alleged anti-Semitism. Plaintiff denied that Disney was anti-Semitic and denied that the public views him as such. The court found the dispute irrelevant and granted summary judgment of fair use. "Defendants need to prove neither that the public associates the song with Walt Disney individually or personally nor `actually believes' Walt Disney was an anti-Semite; Defendants need only demonstrate that `a parodic character may be reasonably perceived.'"). The Court's logic leads to the same result in this case. Plaintiffs and Defendants disagree about the proper interpretation of the original songs' lyrics. They disagree about the value of Defendants' compositions. None of that really matters. This Court could decide that the commentary in Defendants' videos is foolish or factually insupportable. It could even conclude that the commentary in Defendants' videos would be missed or misunderstood by most viewers. Yet the Court would still have to conclude that the works contain parody, because the only issue is whether Defendants' videos "may reasonably be perceived" as having a parodic character. In other words, to reject Defendants' parody argument, this Court would have to conclude that a reasonable person absolutely could not perceive in Defendants' videos any commentary on the original songs. And in light of Defendants' thorough and detailed explanation in their moving papers about how the parodies do comment on the originals, the record before this Court does not allow such a finding. 2. Plaintiffs' arguments about Defendants' intent are irrelevant and could not be accepted at summary judgment in any event Plaintiffs' second argument concerns whether Defendants' explanation of the parodic character of the videos is legitimate or, in Plaintiffs' words, merely an effort to "retrospectively ... portray their campaign ads as parodies...." Plaintiffs' Opposition at 2. Their argument, then, hinges on Defendants' intent. It fails.
16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
16783.1

It is not clear why Defendants' subjective intent should matter. Imagine that a songwriter subjectively intends to comment and criticize a copyrighted work directly--that he has nothing but parodic intent swimming in his head the entire time he works on a project--but the resulting would-be parody in no way comments on or criticizes the original. In such circumstances, would a court deem the work parodic simply because, while the author failed entirely to comment on or criticize the original, he really had wanted to? Courts have not indicated that the law governing fair use is akin to a T-ball game, where trying hard and having good intentions is what really matters. Conversely, if 2 Live Crew had no intention whatsoever of commenting on Pretty Woman--if their entire goal was to take Roy Orbison's tune only because it would be easier than writing their own--would not the work at issue in Campbell still be parody? It would still comment on or criticize the original work (even if purely by accident). Put another way, if a work comments on or criticizes an earlier work--be it the 2 Live Crew song at issue in Campbell or the archetypical parodies discussed in Dr. Rose's report--and if the work would otherwise satisfy the legal definition of parody, how could the author's subjective intent morph the clearly parodic work into something else? Thus, Plaintiffs' focus on whether Defendants really tried to create a parody seems to miss the point. And while the Supreme Court intentionally avoided weighing in on the importance (or lack of importance) of the defendant's intent in Campbell, see 510 U.S. at 1174 n.18, there seems to be little basis in logic for finding the author's intent to be a determining factor. In light of the Ninth Circuit's clear holding that whether a work contains parody is a pure question of law, it is difficult to understand how a purely factual inquiry over the author's subjective intent could be important in this purely legal analysis. But if this Court disagrees and concludes that it is important to divine Defendants' intent, the Court must assume for purposes of summary judgment that DeVore's declaration is valid. That is, this Court could not reject DeVore's declaration and simply declare his stated intent to be false. By demanding that this Court do so, Plaintiffs are 5

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

asking this Court to reject evidence and resolve a factual dispute in their favor, something the Federal Rules of Civil Procedure do not permit. Plaintiffs' basis for the request seems to be Dr. Seuss. They insist that this case is "legally indistinguishable" from Dr. Seuss, and they therefore encourage the Court here to find that Defendants' explanations are "pure schtick" just as the Ninth Circuit did there. Plaintiffs' Opposition at 5-6. But Dr. Seuss was an appeal of a preliminary injunction order. The court determined who was likely to prevail; it did not make a final ruling. The parties had no right to a jury determination at that preliminary stage, and the Ninth Circuit reviewed the district court's factual findings for clear error. Dr. Seuss, 109 F.3d at 1403. Procedurally, this case is in a far different posture, and this Court cannot reject Defendants' testimony and find a lack of parodic intent. The Court has evidence of Defendants' intent from DeVore. It has no contrary evidence. Thus, if this Court believes Defendants' intent is critical to the fair use analysis, it must find in DeVore's favor on that question. 3. Plaintiffs misunderstand how directly and in what direction a parody must aim Plaintiffs' final parody arguments concern the directness and aim of a parody. They say that Defendants' videos are not parodies because they primarily target DeVore's political opponents. In addition, they say that parodies must directly target the original works and only the original works; even commenting on or criticizing Henley would not implicate the fair use doctrine. Plaintiffs are wrong. The videos can be and are parodies even though they also target Barack Obama, Barbara Boxer and other Democratic politicians. Plaintiffs make much of the fact that from the beginning Defendants spoke about how the videos criticize those political figures. They do. But the videos can criticize those figures and still be parodies. Parody is "the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works." Campbell, 510 U.S. at 580 (emphasis added). Defendants have never contended that their videos are solely parodic, and there is no requirement that they be solely parodic. See, e.g., id. at 581 (noting that "parody often
16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

6

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

shades into satire" and "a work often contains both parodic and nonparodic elements," but that a work can still be protected by fair use under the four fair use factors). As explained in Defendants' moving papers, the videos do comment at least in part on the original songs. Plaintiffs also argue that any commentary on or criticism of Henley himself would not justify Defendants' use of the original works. See Plaintiffs' Opposition at 7. They argue that a parody can only target an author's works, not the author or performer. Id. Their support for that position is two district court cases from other districts, Salinger v. Colting, 641 F.Supp.2d 250, 262 (S.D.N.Y. 2009) and Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559, 1568 (S.D. Cal. 1996). It is worth noting that both of these cases were affirmed on appeal, but neither appellate court adopted the theory that Plaintiffs espouse here. Indeed, it is not even clear that the district court in Salinger espoused Plaintiffs' view at all. See Salinger, 641 F.Supp.2d at 262 (The court seems to assume that targeting Salinger would be non-parodic but the court does not say so directly and offers no authority and the court proceeds to analyze whether the targeting of Salinger, which it deems "transformative," is sufficient to trigger a fair use defense). The district court in Dr. Seuss undeniably did espouse Plaintiffs' argument that parody must criticize or comment on the original work, not the author. Dr. Seuss, 924 F.Supp. at 1568. But the Ninth Circuit was right not to adopt that logic on appeal. As explained in a district court opinion from this district, parody is not so limited. In Burnett v. Twentieth Century Fox Film Corp., 491 F.Supp.2d 962, 967-969 (C.D.Cal. 2007), Carol Burnett sued for copyright infringement after the television program Family Guy used a character from the Carol Burnett show, the Charwoman, in an episode. Specifically, the show's characters explain that a porn shop is clean "because `Carol Burnett works parttime as a janitor'" and the show makes reference "to Carol Burnett's signature ear tug." Burnett, like Plaintiffs here, argued that use of the original work is not parodic if the true target is a person (there, Carol Burnett) rather than the original work. And they argued that the target of the Family Guy was Carol Burnett. They supported that argument by pointing out that "the Charwoman never tugged her ear in The Carol Burnett Show; rather, 16783.1 7
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Carol Burnett playing herself tugged at her ear in the closing segment of the show as a salute to her grandmother. Furthermore, plaintiffs assert that the act of placing the Charwoman in the role of a janitor in an erotic store is neither `absurd' nor `transformative' because `one could easily imagine a charwoman cleaning the floor of a porn shop.'" Thus, "the crux of plaintiffs' argument is that the target of the `Family Guy's crude joke' appears to be Burnett, her family, and her wholesome image as opposed to the Charwoman." Burnett, 491 F.Supp.2d at 968. The court found the alleged distinction irrelevant. "As defendant correctly notes, it is immaterial whether the target of Family Guy's `crude joke' was Burnett, the Carol Burnett Show, the Charwoman, Carol's Theme Music or all four. The eighteen-second clip ... is clearly designed to `imitate [ ] the characteristic style of an author or a work for comic effort or ridicule,' and is executed in such a manner that `the characteristic turns of thought and phrase or class of authors are imitated in such a way as to make them appear ridiculous.'" Id. at 968-69. Thus, even if Family Guy sought to criticize or comment on Burnett rather than the original copyrighted work (the Carol Burnett Show), it still satisfied the definition of parody. See also Bourne, 602 F.Supp.2d at 499 (finding Family Guy's use of "When You Wish Upon A Star" parodic in part because it comments on or criticizes Walt Disney, even though Disney did not write, perform, or own the copyright in the song). The Burnett court's logic is sound. In order to comment on or criticize an entertainer like Carol Burnett or Don Henley--and under the First Amendment, such commentary or criticism is legitimate, protected speech--a parodist must be free to use the target's work. How do you successfully parody Don Henley without using his music?1 It is his music that makes him famous and worth parodying in the first place. (There is substantially less value in parodying the political statements of persons who nobody has heard of or listens to.)

1

The Dr. Seuss district court's contention that the would-be parodist or satirist "may ... freely plunder the myriad familiar works already in the public domain through the expiration of copyright protection" is not encouraging being that a copyright term is life of the author plus 70 years. See Dr. Seuss, 924 F.Supp. at 1568. A public figure like Don Henley would effectively be free from parodic criticism until 70 years after his death.
16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Henley may refuse to pick up his socks at home, and he may even cry during sad movies. But the world has no reason to know (or care) about any of this. It is his work that makes him matter, and it is largely through his work that the public knows him. If a parodist may not use Henley's work in order to mock or criticize him, the parodist is denied the only effective tool in his arsenal. Here, Defendants do comment, at least in part, on Henley as a representative of liberal, entertainment icons. It is Henley and his fellow celebrity Democrats that serve as the narrators in The Hope of November, as is explained in Defendants' moving papers. (Note that the video also comments on The Boys of Summer itself, as the moving papers make clear, so the video is parodic in two different ways.) Plaintiffs' argument to the contrary seems to hinge on the lack of a direct reference to Henley or a use of his picture in the video. But the law does not require that a parody name its target. See, e.g., Campbell, 510 U.S. at 583 n.17 ("Parody serves its goals whether labeled parody or not, and there is no obvious reason to require parody to state the obvious (or even the reasonably perceived)."). Indeed, Henley himself makes clear that such a standard would be nonsensical. As Henley himself concedes, "certainly some of my songs have social commentary in them, which I think is my right as a citizen and an artist, but I don't try to beat people over the head, you know. I don't name names in my songs." Second Supplemental Declaration of Christopher Arledge, Exh. 1 at 24:1-5. For example, Henley has described "On the Border," one of his Eagles works, as "a thinly, perhaps I should say thickly disguised political piece about Nixon and all the trouble he was in." Id. at 28:17 to 29:6. Yet the song nowhere mentions Richard Nixon. Id. at 26:2-9. Henley believes it is a mark of "good songwriting" to be more subtle about his social commentary. Id. at 34:7-15. Henley's testimony, the testimony of one of America's great songwriters, shows the flaw in Plaintiffs' argument. A writer can comment on a person without naming him or her, and there is no reason why a parodist must identify by name the targets of his parody. If commentary or criticism can reasonably be perceived without identifying a target by name, there is no reason in law or logic that the definition of parody would not be satisfied. 16783.1 9
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

B.

The fourth fair use factor favors Defendants

Plaintiffs question the factual support for Defendants' argument under the fourth fair use factor. They say "Defendants' primary argument that their uses are not harmful is based on the (unfounded) opinion of DeVore that Defendants' uses could not possibly harm the market for Plaintiffs' original recordings." Opposition at 16. Plaintiffs are wrong. Defendants relied primarily on Plaintiffs' concessions that they have no basis to conclude the videos impacted the value of the original songs, on Plaintiffs' concessions that the videos are "amateurish" and that they do not believe anybody would find them to be legitimate substitutes for the original songs, and on Plaintiffs' concessions that there is no market for licensing the songs because they do not allow one to exist. See Defendants' Memorandum at 13-14. Defendants' evidentiary showing is compelling, and in light of the inherent difficulty of proving a negative, it would be unreasonable to expect anything more. Ultimately, the issue is simple. There is no evidence (and no reason to believe) that the videos harm sales of the original songs. Any potential harm would have to be found in the market for licensing. But there are two problems with Plaintiffs' licensing-harm argument. First, Plaintiffs have chosen not to permit any licensing opportunities. To be clear, Defendants do not believe, and are not asking this Court to believe, that the original songs would have no value in the marketplace if Plaintiffs chose to license them. But Plaintiffs have not chosen to license them; thus, there is no market to harm. Plaintiffs argue that this fact does not mean that the Court must find in Defendants' favor on this fourth factor. But it is an important consideration and certainly a reason why this Court should pause before finding that the fourth factor weighs in Plaintiffs' favor. Plaintiffs rely on Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110, 1119-1120 (9th Cir. 2000) to prove their argument under this fourth factor. The case actually helps Defendants. There, the defendant argued that the fourth factor weighed in its favor because the plaintiff had not exploited the copyrighted work for 10 years. The court declined to adopt that reasoning, finding that a plaintiff retains some interest in a work because he might change his mind, and noting that the plaintiff had 16783.1 10
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

intended to revise the work and publish a new version in the future. Thus, the plaintiff in Worldwide Church had a much stronger argument than Plaintiffs here; unlike Plaintiffs here, the plaintiff in that case intended to enter the market. Plaintiffs here made clear in deposition that they have no desire to license their songs commercially. But--critically-- the court in Worldwide Church still did not find that the fourth fair use factor therefore favored the plaintiff. Instead, the court treated the fourth fair use factor as neutral. Second, Plaintiffs focus on an alleged harm that copyright law does not take into account. Plaintiffs' expert argues that the videos harm the value of the songs and Henley's persona by politicizing them and thus "alienating fans." Plaintiffs' Opposition at 16. But that expert opinion assumes much for which there is no foundation: namely, that Henley is not already politicized (it's hard to make that argument about a "well-known" Democrat who admittedly puts social commentary in his songs, and the expert gives no support for his position), and that the public will believe Henley has an association with the videos (something he has tried unsuccessfully to support in this case as part of its Lanham Act claim). Most importantly, the harm that Plaintiffs describe is not cognizable under the Copyright Act. Copyright law is concerned only with a particular type of harm. 2 Live Crew's vulgar parody of Pretty Woman may have harmed the value of Orbison's original song, either because it highlighted the "naivety" of the original or because the association with 2 Live Crew's vulgar lyrics and themes simply turned off potential customers. But the Court in Campbell held that the lower courts erred if they took such concerns into account. Campbell, 510 U.S. at 592. Copyright law is only concerned with whether the second work usurps demand for the original. Id. A parody can permissibly ruin all demand for the original work as long as it does not usurp the value of the original work. See also Bourne, 602 F.Supp.2d at 510 (finding that the plaintiff relied on a "misconception of the fourth factor analysis" in arguing that the original song would be harmed because the defendants' use "would be highly offensive to a significant number of people" thus "harming the original song by association."). Plaintiff's expert's speculation that the videos could politicize the songs or Henley's persona is, therefore, irrelevant. 16783.1 11

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

III.

HENLEY IS NOT ENTITLED TO QUASI-COPYRIGHT PROTECTION UNDER THE LANHAM ACT Henley wants this Court to give him control over the use of copyrighted materials

under the Lanham Act rather than the Copyright Act. Courts have been careful not to allow such a result, for the reasons discussed at length in Defendants' other briefs. Thus, the Ninth Circuit requires a plaintiff in a false endorsement claim, like Henley, to show that the defendant misappropriated one of the plaintiff's distinctive attributes. Henley, who cannot make such a showing, continues to insist that his false endorsement claim does not require proof that Defendants used a distinctive characteristic or attribute of his, despite the Ninth Circuit's clear and voluminous statements to the contrary. Thus, Henley's argument would permit Henley to have protection of particular copyrighted works even if he does not own the copyrights (he doesn't as to one of the songs here) and even if a user does not reference Henley or use any of Henley's identifiable characteristics. No court has done what Henley asks this Court to do. This Court should decline the invitation to be the first. Henley points to three cases as authority for his position. All are distinguishable. The first, Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), is facially inapplicable. The issue there was whether the plaintiff had a protectable mark in the Dallas Cowboys Cheerleading uniform. The court concluded that plaintiff did have a viable trademark in the uniform. Not surprisingly, in the process of reaching that conclusion, the court said absolutely nothing about whether a celebrity can have a viable "mark" for purposes of a false endorsement claim absent evidence that defendant misappropriated a distinctive attribute. It certainly did not undercut a later Ninth Circuit case holding that in a false endorsement claim the "mark" at issue is a distinctive attribute of the celebrity plaintiff. See Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1106 (9th Cir. 1992) ("[C]ourts have recognized false endorsement claims brought by plaintiffs, including celebrities, for the unauthorized imitation of their distinctive attributes, where those attributes amount to an unregistered commercial "trademark.") (emphasis added).

16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

12

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

The second case, Butler v. Target Corp., 323 F.Supp.2d 1052 (C.D. Cal. 2004), also does not support Henley. Two things about Butler are important. First, the plaintiffs in Butler probably had a stronger claim for false endorsement than Henley does because the defendant actually used their voices--which are undoubtedly distinctive attributes of theirs--in the advertisements. "Plaintiffs' voices are prominent and recognizable in the Recording and in television broadcasting of commercials for Target Stores which featured the Recording as the soundtrack." Id. at 1054. Even so, it appears that the plaintiffs rested their Lanham Act claim on a different theory entirely. That theory, and this is the second point to be made about Butler, was different than Henley's. The plaintiffs in Butler argued that the title and key lyrics of their song were valid trademarks and were being infringed. They relied on EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir. 2000). See Butler, 323 F.Supp.2d at 1059. But Henley does not argue that he has a trademark in the title or lyrics of the songs; Henley's case assumes that the mark is his persona. Butler is inapposite. But the EMI case that the Butler court relied on does expose the flaws in Henley's argument. Note that EMI was not a claim by a celebrity for an alleged false endorsement. Nor was there any dispute as to whether the plaintiff had a valid trademark. In EMI, the "defendants conceded that EMI had a right protectable under § 43(a) in the title to the song and that the title had acquired secondary meaning among consumers." Id. at 61. But the scope of the mark was disputed, and the Second Circuit was careful to limit its scope: "EMI has no rights to the music as a trademark." Id. at 62. The court offered a detailed explanation for why EMI could not have a trademark in the sound recording or composition itself, essentially because "[t]he creation and expression of an original work is protected by copyright law, and once an original work has been produced trademark law is not the proper means of protecting the rights in this originality." This explanation highlights the error in Henley's assertion that the Lanham Act allows him to preclude others from using the musical compositions in this case. The remedy for use of a copyrighted composition lies in copyright, not trademark.
16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

13

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Plaintiffs' final case, White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992), is no more useful to Henley than the others. There, the defendant's commercial advertisement featured a robot with a blond wig, long gown, and large jewelry that turned letters on a game show that looked like the Wheel of Fortune set. The court concluded that "[v]iewed separately, the individual aspects of the advertisement ... say little. Viewed together, they leave little doubt about the celebrity the ad is meant to depict." Id. at 1399. Thus, the court concluded that the defendant's use of multiple characteristics associated with Vanna White resulted in the misappropriation of Vanna White's identity. Id. The White opinion has its critics. It drew vehement dissents from Judges Alarcon, id. at 1402, and Kozinski, White v. Samsung Elecs. Am., Inc., 989 F.2d 1512 (9th Cir.1993) (denial of rehearing en banc) (Kozinski, J., dissenting), and the Sixth Circuit expressly rejected it. Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 970 (10th Cir. 1996) ("We disagree with the result in that case for reasons discussed in the two dissents that it engendered."). Thus, there is reason to believe that White was pushing the boundaries of false endorsement to the breaking point. Yet Vanna White's argument was still far superior to Henley's. In White the defendant used characteristics of Vanna White to depict a robot Vanna White. And while none of the characteristics, in isolation, were distinctive, they were in combination. Henley has no such argument. Defendants here have not used any characteristics of Henley. They have simply used copyrighted music. It is up to copyright law alone to determine whether that use was permissible. Finally, Henley's effort to distinguish Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001), merits brief attention. He argues, "[u]nlike Gilberto, Henley is not claiming a trademark in an otherwise licensed use of his own performance, but rather, that two songs widely associated with him were used in unauthorized, simulated performances to falsely suggest an association between Henley and Defendants' videos." Plaintiffs' Opposition at 22. He is right; in Gilberto, the defendant used the plaintiff's voice and here the Defendants did not use Henley's voice (or any other aspect of Henley's persona). The mystery is why Henley believes this distinction helps him. By Henley's logic, Gilberto's 16783.1 14
REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

case is worse than his because the defendant actually used a distinguishing characteristic of hers; so would the relative merits of her case have dropped further if the defendant had used her picture also? Henley offers no authority to support this novel legal theory that a false endorsement claim is improved by the defendant's failure to use a distinguishing characteristic of the plaintiff; he may be waiting some time before such a case comes along. IV. CONCLUSION Defendants' videos transformed the original songs into something new and imputed into them a new meaning. They did so without harming the value of the underlying songs. And they did so to broadcast pure political speech in the middle of a Senate campaign. If any case merits a fair use finding, this one does. Lacking a viable claim under the Copyright Act, Henley looks to the Lanham Act. His argument is novel and unsupported. It flies in the face of all the legal precedent and common sense. Henley has no right to control copyrighted musical compositions through trademark law. Defendants are entitled to summary judgment on all claims. Dated: May 17, 2010 ONE LLP

By: /s/ Christopher W. Arledge Christopher W. Arledge Attorneys for Defendants, Charles S. Devore and Justin Hart

16783.1

REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT

15