Arrow Productions, Ltd. v. The Weinstein Company L.L.C. et al

Filing 15

OPINION re: 9 MOTION for Attorney Fees Judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c),. filed by Radius-TWC, The Weinstein Company L.L.C., Eclectic Pictures, Inc., Nu Image, Inc., Laura Rister, Un titled Entertainment, Inc., John Does, Animus Films, L.L.C., Avi Lerner, Millennium Films, Inc. The court enters judgment for defendants and dismisses plaintiff's complaint in its entirety. The court declines to award attorneys' fees to defendants. This opinion resolves item #9 on the docket. (Signed by Judge Thomas P. Griesa on 8/25/2014) (lmb)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

Arrow Productions, LTD.,
Plaintiff,

13 Civ. 5488

v.
OPINION
The Weinstein Company LLC, et al.,
Defendants.

This is a motion for judgment on the pleadings made by defendants the
Weinstein Company, LLC, et al., against plaintiff Arrow Productions. Plaintiff,
an entertainment company that produces and distributes films, owns the
copyrights to the well-known pornographic film Deep Throat as well as the
trademarks “Deep Throat” and “Linda Lovelace.” Plaintiff alleges that in filming
the movie Lovelace, a biographical account of Linda Lovelace, the star of Deep
Throat, defendants infringed upon plaintiff’s copyright protected material (17
U.S.C. § 107) and violated plaintiff’s trademark rights (15 U.S.C. §§ 1114,
1125(a), 1125(c)).
The court enters judgment for defendants and dismisses plaintiff’s
complaint in its entirety.

1

Pleadings
The following facts and allegations are drawn from the pleadings, and the
works incorporated by those pleadings—namely, the films Deep Throat and
Lovelace.
The Controversy
Deep Throat is a famous pornographic film replete with explicit sexual
scenes and sophomoric humor. It was released in 1972 and stars Linda
Lovelace1. The film is about a woman—Linda Lovelace—who cannot achieve an
orgasm and undertakes a search for sexual fulfillment. Along the way,
Lovelace meets Dr. Young who diagnoses her unusual problem and tells her
that she can only achieve sexual satisfaction by performing oral sex (or, more
specifically, the act which is the title of the film) because her clitoris is in her
throat. In the end, Lovelace is finally able to achieve sexual fulfillment.
Lovelace is a biographical film that was released in 2013. It provides a
two-pronged look at the tragic life of Linda Lovelace. First, the film documents
Lovelace’s marriage to her husband Chuck Traynor, her decision to enter the
pornography business, and her development into a cultural icon. Then, the
film provides a behind-the-scenes depiction of Lovelace’s life that focuses on
the physical and emotional abuse that Traynor inflicted upon her, and the

Linda Lovelace’s legal name is Linda Boreman. However, throughout her life
she went by the name Linda Lovelace. Accordingly, in this opinion, the court
will refer to her as Linda Lovelace.
1

2

manner in which he coerced her into participating in Deep Throat and its
subsequent marketing. The film aims to demonstrate how it came to be that
Lovelace—once the most famous star of the pornography business—became an
outspoken critic of pornography later in her life. Lovelace does not contain any
pornographic scenes or nudity.
Copyright Claim (Count One)
Plaintiff alleges that in their film Lovelace, defendants have copied the
following three scenes from Deep Throat: (1) the opening scene in Deep Throat,
where Lovelace is filmed driving down the road in her Cadillac, (2) the first
pornographic scene in Deep Throat, where Lovelace walks in on a man
performing oral sex on her housemate, and (3) the most famous scene in Deep
Throat, where Dr. Young diagnoses Lovelace’s condition and tells her that she
can achieve sexual satisfaction by performing oral sex and suggests that she
start with him. In its complaint, plaintiff alleges that in these three scenes,
defendants “have reproduced dialogue word for word, positioned the actors
identically or nearly identically, recreated camera angles and lighting, and
reproduced costumes and settings.” Compl. ¶ 57.
The court has reviewed both Deep Throat and Lovelace and below,
summarizes the three contested scenes as depicted in each film.
(1) Scene of Lovelace Driving

3

Deep Throat: The film opens with Lovelace driving down the road in a
blue Cadillac. While the opening credits are rolling, there are shots of Lovelace
from inside and outside of her car. Lovelace is driving from a promenade along
the water back to her home. During the scene, there is music playing—a
version of “Ode to Joy” on the organ—and there is no dialogue. The scene ends
when Lovelace arrives back at her home.
Lovelace: The directors of Lovelace have provided a behind-the-scenes
depiction of the filming of this scene. This scene occurs roughly thirty minutes
into Lovelace. At this point in the film, Lovelace has agreed to take part in the
filming of Deep Throat and the parties begin by filming this opening scene.
The scene starts with Lovelace driving a red Cadillac in a motel parking
lot. The film-crew—the director, videographer, and sound director—is in the
car with her. Lovelace begins to drive and then slams on the brakes. Lovelace
is clearly nervous. The director tells her to “drive normally,” to which Lovelace
responds, “I don’t know how I normally drive. I just drive, you know?” The
director tells her, “Yeah. That’s exactly right. Just drive and pretend we’re not
here. Okay?” Lovelace collects herself and then proceeds to drive without a
problem. She drives along the road by the water. The director tells her that
she is “doing beautiful, baby.” The scene then ends.
(2) First Pornographic Scene
Deep Throat: This is the second scene in the film. Upon arriving back
home, Lovelace walks into the kitchen where she finds her housemate, Helen.
4

There is a man performing oral sex on Helen in plain sight, as Helen sits on the
kitchen table. Helen had recently been grocery shopping and there are
groceries on the kitchen table. Lovelace, apparently unfazed, says to Helen,
“that’s a pretty sight. I hope that I’m not interrupting anything.” Helen tells
Lovelace that she’s not interrupting and that the groceries also belong to her.
Lovelace then begins to put away the groceries. Helen asks Lovelace for a
cigarette and turns to the man, delivering the punchline of the scene, “mind if I
smoke while you’re eating?” Lovelace exits the kitchen and a pornographic
scene ensues between Helen and the man in the kitchen.
Lovelace: This scene is recreated about halfway through Lovelace. Here,
defendants have not provided a behind-the-scenes account of the scene.
Rather, the scene is shown during a recreated red-carpet screening of Deep
Throat to a star-studded audience. Lovelace is seated in a private area with
Hugh Hefner, the owner of Playboy Magazine, watching the film and discussing
her future. Defendants cut between shots of the recreated scene and Lovelace
speaking with Hefner.
In the recreated scene, Lovelace once again engages in a conversation
with her housemate Helen, while a man is performing oral sex on Helen. In
this filming, Helen is seated on a bar and there are no groceries. Lovelace is
complaining to Helen about her inability to achieve an orgasm. Lovelace says
that “there’s got to be more to sex than a lot of little tingles. There’s got to be
bells ringing, dams bursting, or bombs going off.” Helen then delivers the

5

punchline of the scene, “you want to get off or wreck a city.” Upon hearing this
line, the audience at the screening erupts in laughter and defendants then cut
back to the conversation between Lovelace and Hefner. Hefner tells Lovelace
that she could be a real movie star.
Later in the film, during the behind-the-scenes depiction of the Lovelace
story that focuses on her suffering during the filming and marketing of Deep
Throat, defendants return to this scene. Here, defendants include the detail
that during the screening, Hefner asks Lovelace to perform oral sex on him. It
appears as though he is offering her a quid pro quo—if she performs oral sex
on him, he will help her with her career.
(3) Scene with Dr. Young
Deep Throat: In this scene, Lovelace meets with Dr. Young to discuss
her inability to achieve an orgasm. Dr. Young is an eccentric and quirky man
and there is no evidence that he is an actual doctor apart from his title. His
office is in his home and he is assisted by a young nurse, who also doubles as
his sexual companion. During the beginning of the consultation, Dr. Young is
blowing bubbles with a children’s toy. Lovelace tells Dr. Young that there must
be more to sex than “little tingles” and that she wants “to hear bells, bombs,
and dams bursting.” Dr. Young, after returning the bubble toy to the nurse,
begins the consultation by examining Lovelace’s vagina. He calls to the nurse
for “sterilization” and the nurse returns with a dish of water into which he dips

6

his fingertips. Dr. Young begins to examine Lovelace’s vagina with a telescope.
He then uses his fingers and determines that Lovelace does not have a clitoris.
Dr. Young then examines Lovelace’s throat and finds that her clitoris is
actually in her throat. Upon hearing this diagnosis, Lovelace begins to cry. Dr.
Young consoles Lovelace and then encourages her to try engaging in the form
of oral sex, for which the film has its name, on him. He says to her, invoking
the famous catch-phrase from the Alka-Seltzer commercial of the time, “try it.
You’ll like it.” A pornographic scene ensues and Lovelace is finally able to
achieve an orgasm.
Lovelace: Once again, defendants have provided a behind-the-scenes
account of the filming of this famous scene. Here, the scene is split into two
parts—the first half of the scene, or the diagnosis by Dr. Young, is filmed on
one day, and the second half of the scene, or the pornographic part of the
scene, is filmed on the following day.
During the filming of the diagnosis, defendants set up the scene in such
a way that Lovelace, Dr. Young, as well as all of the directors and producers of
Deep Throat are included. The scene begins with a producer holding a
“clapperboard” and the director shouting “action.” Lovelace tells Dr. Young,
who is blowing bubbles during the consultation, that she enjoys having sex,
but that there has to be more to sex than just “little tingles.” Lovelace then
tells Dr. Young that she wants to hear “bells ringing, dams bursting, bombs
going off.” Dr. Young decides to examine Lovelace’s throat—he does not
7

conduct a full physical examination—and determines that her clitoris is in her
throat. Upon hearing this diagnosis, Lovelace begins to cry. Dr. Young then
consoles her. The director yells “cut” and the filming ends for the day.
The director and the producers are very pleased with the filming,
however, they then point to an aggravated Traynor (Lovelace’s husband) sitting
next to Lovelace. Traynor is talking to Lovelace, but defendants do not include
the details of the conversation. It is clear that he is intimidating her. The
directors and producers immediately recognize that having Traynor present for
the next day’s pornographic scene would be very problematic. Later that day,
the producers tell Traynor that they need him to go to Miami tomorrow to pick
up more film. This request is simply an excuse to ensure that Traynor is not
present during Lovelace’s most important pornographic scenes. Traynor
reluctantly agrees to travel to Miami.
During the signature pornographic scene, once again, both characters as
well as all of the directors and producers are filmed. There is no nudity in the
scene. The scene begins by Dr. Young telling Loveleace, “try it. You’ll like it.”
Lovelace then starts to engage in oral sex. All of the producers and directors
are watching and one of the producers jokes to the others, “we’re all gonna win
Oscars.” Dr. Young, in this filming, ejaculates prematurely. The producers are
caught by surprise and begin to make fun of him. It is clear that this is just
the first take of the filming of this scene. Lovelace turns to the producers and
sheepishly asks, “I’m really sorry, did I do something wrong?” The producers

8

and director reply, “no…no…no.” The scene then ends and cuts to the cast
and crew celebrating the completion of the filming.
Trademark Claims (Counts Two, Three, and Four)
Plaintiff has also brought the following three trademark claims against
defendants: (1) trademark infringement under 15 U.S.C. § 1114, (2) false
designation of origin under 15 U.S.C. § 1125(a), and (3) trademark dilution
under 15 U.S.C. § 1125(c). “Linda Lovelace” and “Deep Throat” are registered
trademarks belonging to plaintiff. In its complaint, plaintiff alleges that
defendants have violated 15 U.S.C. §§ 1114, 1125(a), 1125(c) through naming
the film “Lovelace” and through referring to “Deep Throat” in Lovelace and in
the marketing for Lovelace.
Procedural History
Plaintiff filed suit on August 6, 2013. On August 7, 2013, plaintiff moved
this court for a temporary restraining order to enjoin the distribution of
Lovelace, which was to be released on August 9, 2013. The court denied
plaintiff’s application for a temporary restraining order.
Discussion
A motion for judgment on the pleadings pursuant to Federal Rule of Civil
Procedure 12(c) is analyzed under the same standard applicable to a motion to
dismiss for failure to state a claim pursuant to Federal Rule of Civil Procedure
12(b)(6). See Sheppard v. Beerman, 18 F.3d 147,150 (2d Cir. 1994).
9

Accordingly, judgment on the pleadings is only appropriate if, drawing all
reasonable inferences in favor of the non-moving party, it is apparent from the
pleadings that no set of facts can be proven that would entitle the plaintiff to
relief. See Id.
Copyright Claim
The court first considers defendants claim that they did not infringe
upon plaintiff’s copyright protected material in violation of 17 U.S.C. § 107,
because defendants’ recreation of the three scenes in Deep Throat constitutes
fair use. The court finds that defendants have engaged in the fair use of the
copyright protected material.
The fair use doctrine “permits and requires courts to avoid rigid
application of the copyright statute when, on occasion, it would stifle the very
creativity that the law is designed to foster.” Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 577 (1994). The Copyright Act provides that the use or
limited reproduction of a copyrighted work “for purposes such as criticism,
comment, news reporting, teaching… scholarship, or research, is not an
infringement of copyright.” 17 U.S.C. § 107. In determining whether the use
made of a work in any particular case is fair use, courts consider the following
four factors enumerated in the Copyright Act:
(1) the purpose and character of the use, including whether such use is
of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;

10

(3) the amount and substantiality of the proportion used in relation to
the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
17 U.S.C. § 107(1)-(4).
The Second Circuit has found that these statutory factors are not
requirements and that the party requesting a judgment of fair use need not
demonstrate that every factor weighs in its favor. Cariou v. Prince, 714 F.3d
694, 705 (2d Cir. 2013). Instead, the fair use determination is an open-ended
and context sensitive inquiry. Id. “The ultimate test of fair use is whether the
copyright law’s goal of promoting the Progress of Science and useful Arts would
be better served by allowing the use than by preventing it.” Id. If the use of
the copyright material is fair, then the defendant need not seek or receive
permission from the plaintiff to use the material. FireSabre Consulting LLC v.
Sheehy, No. 11-cv-4719 (CS), 2013 WL 5420977, at *7 (S.D.N.Y. Sept. 2013).
The determination of fair use is a mixed question of law and fact. Harper
& Row Publishers v. Nation Enterprises, 471 U.S. 539, 560 (1985). Plaintiff
argues that this court should not make a fair use determination at this stage in
the litigation, because there are factual questions that must be addressed
through discovery. The court disagrees. The court is not aware of any
authority in this Circuit that prevents it from undertaking a fair use inquiry in
a motion for judgment on the pleadings. The Second Circuit has explained that
the “fact-driven nature of the fair use determination suggests that a district
court should be cautious in granting [dismissal in advance of trial] in this
11

area.” See Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir. 1991).
The court appreciates that would there be factual questions in the case, then a
fair use determination would be inappropriate. However, there is a complete
factual record before the court and discovery would not provide any additional
relevant information in this inquiry. All that is necessary for the court to make
a determination as to fair use are the two films at issue—Deep Throat and
Lovelace. Accordingly, below, the court undertakes a fair use analysis.
Purpose and Character of the Use
The first statutory factor—the purpose and character of the use—is the
heart of the fair use inquiry. See On Davis v. The Gap, Inc., 246 F.3d 152, 174
(2d Cir. 2001). “There is a strong presumption in the Second Circuit that this
factor favors the defendant if the allegedly infringing work fits within the
Section 107 preamble uses: criticism, comment, or research.” Bill Graham
Archives, LLC. v. Dorling Kindersley Ltd., 386 F.Supp.2d 324, 328 (S.D.N.Y.
2005). The court in Bill Graham went on to explain that “[b]iographies in
general and critical biographies in particular, fit comfortably within these
statutory categories of uses illustrative of uses that can be fair.” Id. (quoting
New Era Publishing v. Carol Publishing Group, 904 F.2d 152, 156 (2d Cir.
1990)). Here, there is no doubt that Lovelace, which is a critical biographical
work, is entitled to a presumption of fair use.
The more important question under the first factor and in the fair use
analysis more generally, is whether the allegedly infringing work is
12

transformative—whether it “adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or
message.” Cariou, 714, F.2d at 705 (quoting Campbell, 510 U.S. at 579).
Ultimately, transformative works “lie at the heart of the fair use doctrine’s
guarantee of breathing space within the confines of copyright, and the more
transformative the new work, the less will be the significance of other factors,
like commercialism, that may weigh against a finding of fair use.” Campbell,
510 U.S. at 579.
Here, the court finds that defendants’ use, or recreation, of the three
scenes from Deep Throat constitutes transformative use, adding a new, critical
perspective on the life of Linda Lovelace and the production of Deep Throat.
Deep Throat is a pornographic film containing seventeen scenes of explicit
sexual content. Conversely, Lovelace is a critical biographical film that
documents the tragic story of Linda Lovelace and provides a behind-the-scenes
perspective on the filming of Deep Throat. It does not contain any nudity.
Defendants have recreated the three challenged scenes in order to focus on a
defining part of Lovelace’s life, her starring role in Deep Throat.
In two of the three challenged scenes—the driving scene as well as the
scene of Lovelace and Dr. Young—, defendants have provided a behind-thescenes perspective in order to demonstrate Lovelace’s apprehension and
unfamiliarity during the filming of Deep Throat. These two recreated scenes are
markedly different from the originals—they include actors playing the parts of

13

the director, producers, sound directors, and videographers as well as entirely
new dialogue surrounding the filming of the shots. But, most importantly, in
these recreated scenes, the producers of Lovelace have endeavored to portray
Lovelace as an unsuspecting amateur, anxious about her role in the film, and
ultimately, susceptible to the influence of her domineering and manipulative
husband, Chuck Traynor.
The driving scene in Lovelace is entirely different than the driving scene
in Deep Throat. In Deep Throat, the driving scene does not meaningfully
advance the plot of the film; rather, it is a vehicle for displaying the opening
credits. There is no dialogue in the scene. Conversely, in Lovelace, the driving
scene is an important scene. It takes places roughly thirty minutes into the
film. At this point, Lovelace has agreed to take part in the filming of Deep
Throat and this is the first scene. There is ample dialogue in the scene that
captures Lovelace’s anxiety about the filming. She is clearly nervous and more
specifically, she is uneasy about driving while being filmed. Ultimately, after a
few false starts, the director is able to reassure her and the filming begins.
But, the defendants have established an important theme—Lovelace is
undoubtedly a novice who is unsure about her role in the film, and in need of
encouragement and support in order to go forward with the filming.
Similarly, defendants have also transformed the infamous pornographic
scene between Dr. Young and Lovelace into a behind-the-scenes account of its

14

young, inexperienced, and susceptible star. 2 In Deep Throat, this is the most
famous scene in the movie. It progresses from a faux-medical consultation to a
sexual encounter between Dr. Young and his patient, Lovelace. However, in
Lovelace, defendants have recreated this scene to focus on Lovelace’s
inexperience and her relationship with Traynor rather than on the sexual
encounter between Lovelace and Dr. Young. Defendants have removed the
sexually explicit part of Dr. Young’s physical examination as well as the famous
pornographic scene.
Instead, in Lovelace, defendants have split this classic scene into two
parts—a behind-the-scenes depiction of the physical examination and then, the
subsequent sexual scene. Lovelace’s relative inexperience is evident
throughout the filming. For instance, after Dr. Young ejaculates prematurely,
she turns to the directors and in a moment of unintended comedy says, “I’m
really sorry. Did I do something wrong?” Of course, she has not done anything
wrong.
But, perhaps most importantly, through dividing the scene in two,
defendants are able to highlight the fraught relationship between Lovelace and
Admittedly, defendants have copied parts of the dialogue from Deep Throat.
For example, defendants have copied the following lines of dialogue: (1)
Lovelace telling Dr. Young that she wants to “hear bells ringing, dams bursting,
bombs going off,” and (2) after recommending that Lovelace engage in a certain
type of oral sex, Dr. Young provides the following encouragement, “try it. You’ll
like it.” However, as the court in Bill Graham Archives explained “it is both
reasonable and customary for biographers to refer to and utilize earlier works
dealing with the subject of the work and occasionally to quote directly from
such works.” 386 F.Supp.2d at 328 (emphasis added).
2

15

Traynor. After the parties have finished filming the consultation scene and
with the ultimate climatic scene scheduled for the next day, defendants include
a shot of Traynor sitting next to Lovelace. Defendants do not include any
dialogue between the parties but it is clear that Traynor is lording over Lovelace
and intimidating her. The producers and director immediately recognize that
this is a problem. They decide that Traynor needs to be sent away for the
climactic scene between Lovelace and Dr. Young. Thus, through splitting the
scene in two, defendants are able to continue establishing what will turn out to
be the most important plotline in the film—Traynor’s control, abuse, and
manipulation of Lovelace.
In the third recreated scene—the first pornographic shot in Deep
Throat—defendants have, once again, filmed a recreated scene in an entirely
different context. Defendants have not provided a behind-the-scenes account
of the filming of this scene; instead, they have chosen to display the recreated
scene during a star-studded premiere of Deep Throat. The recreated scene
appears on the movie screen before the audience. The recreated scene
contains material differences from the original—both the dialogue and the set
are completely different.
But more importantly, the recreated scene in Lovelace serves an entirely
different purpose from the original pornographic scene in Deep Throat.
Defendants have removed all the nudity from the scene and instead, recreated
the scene in order to juxtapose the public’s overwhelmingly positive response to

16

the film with Lovelace’s simultaneous suffering. In order to achieve this goal,
defendants depict the screening in two separate parts of the film—first, during
the story of the filming and marketing of Lovelace, which captures the public’s
positive response to the film, and then, during the behind-the-scenes account,
which captures Lovelace’s suffering.
During the first depiction of this scene, Lovelace is taken to her seat by
Hugh Hefner and along the way, meets celebrities such as Sammy Davis
Junior. Lovelace is seated alone in the balcony with Hugh Hefner and together,
they watch the film and discuss Lovelace’s future. During the screening, the
audience roars with laughter after Helen—Lovelace’s friend—responds to
Lovelace telling her that that when she has sex, she wants to hear “bells
ringing, dams bursting, and bombs going off,” by delivering the punchline of
the scene, “do you want to get off or wreck a city?” Defendants cut between
shots of the recreated scene, the audience laughing, and Lovelace speaking
with Hefner.
Then, during the second telling of the Lovelace story, defendants return
to this scene and include the detail that while sitting together alone in the
balcony, Hefner attempts to coerce Lovelace into performing oral sex on him. It
appears that he is offering Lovelace a quid pro quo—that he will help her career
if she will engage with him sexually. Ultimately, it is this juxtaposition of the
public’s overwhelmingly positive reception to the film Deep Throat with
Lovelace’s concomitant, silent suffering during the filming and subsequent

17

marketing of the film that is a central theme in Lovelace and that is captured in
this two-part scene.
Finally, the first fair use factor—the purpose and character of the use—
also requires that the court consider whether the allegedly infringing work has
a commercial or nonprofit educational purpose. See Cariou, 714 F.3d at 708.
This factor arises when a secondary user makes unauthorized use of
copyrighted material to gain a profit through copying the original work. See Id.
However, courts are to apply this factor with caution because “as the Supreme
Court has recognized, Congress ‘could not have intended’ a rule that
commercial uses are presumptively unfair.” Id. (quoting Campbell 510, U.S. at
584). “Instead, the more transformative the new work, the less will be the
significance of other factors, like commercialism, that may weigh against a
finding of fair use.” Id. Thus, while there is no doubt that defendants created
Lovelace for commercial purposes, the court does not place very much
significance on this part of the first fair-use factor given the transformative
nature of the work.
In all, the court finds that the first factor weighs in favor of a finding fair
use.
2. Nature of the Copyrighted Work
The second factor—the nature of the copyrighted work—calls for the
“recognition that some works are closer to the core of intended copyright
protection than others, with the consequence that fair use is more difficult to
18

establish when the former works are copied.” Campbell, 510 U.S. at 586. In
this analysis, courts consider “whether the work is expressive or creative, with
a greater leeway being allowed to a claim of fair use where the work is factual
or informational.” Cariou, 714 F.3d at 709.
Here, the court finds that the creative and expressive nature of Deep
Throat places the film within the core of copyright protection and thus, that the
second fair use factor favors plaintiff. However, similar to the commercial
nature of defendant’s film, this factor “may be of less (or even of no) importance
when assessed in the context of certain transformative uses.” Bill Graham
Archives, LLC., 386 F.Supp.2d at 330 (quoting Castle Rock Entertainment Inc.,
v. Carol Publishing Group, Inc., 150 F.3d 132, 144 (2d Cir. 1998); see also,
Cariou, 714 F.3d at 710 In the end, this factor is rarely found to be
determinative. Davis v. The Gap, Inc., 246 F.2d 152, 175 (2d Cir. 2001).
3. Amount and Substantiality of the Use
The third statutory fair use factor “asks whether ‘the amount and
substantiality of the portion used in relation to the copyrighted work as a
whole’ are reasonable in relation to the purpose of the copying.” Campbell, 510
U.S. at 586 (quoting 17 U.S.C. § 107(3)). There is both a qualitative and
quantitative dimension to this analysis. Bill Graham Archives, LLC., 386
F.Supp.2d at 330. This factor “favors copyright holders where the portion used
by the alleged infringer is a significant percentage of the copyrighted work, or
where the portion used is essentially the heart to the copyrighted work.”
19

NXIVM Corporation v. Ross Institute, 364 F.3d 471, 480 (2d Cir. 2004).
Ultimately, the central question in this analysis is whether defendant took no
more than necessary given the creative purpose of the copying. FireSabre
Consulting LLC, 2013 WL 5420977, at *10.
Here, defendants copied, or recreated, three scenes from the original film
Deep Throat in order to provide a behind-the-scenes depiction of the filming
(the driving scene and the Dr. Young scene) as well as to demonstrate the
public’s positive reaction to the film (the first pornographic scene). In all, the
three recreated scenes, which mostly contain original dialogue, last for roughly
four minutes—comparatively, the running time for Deep Throat is sixty-one
minutes. Defendants chose three scenes to recreate and each scene, as
discussed above, serves a distinct and important purpose in telling the story of
Linda Lovelace. The court finds that defendants did not copy any more than
necessary to achieve its creative purposes.
Along these lines, the court finds that defendants have not copied the
core of plaintiff’s film Deep Throat. The heart, or core, of Deep Throat is that it
is a pornographic film that in particular, focuses on one type of pornographic
act. Conversely, Lovelace has an entirely different purpose—it is a critical,
biographical film. Thus, given that the two films have entirely different
purposes, it is impossible that defendants’ could have copied the core of Deep
Throat.

20

Accordingly, the court finds that the third factor weighs in favor of a
finding of fair use.
4. Effect of the Use on the Market for or Value of the Work
The final fair use factor considers “the effect of the use upon the
potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4).
Copyright law is concerned with protecting the ability of a copyright holder to
exploit the market for his work as well as the markets that the copyright holder
could reasonably be expected to enter. Bill Graham Archives, LLC., 386
F.Supp.2d at 331. Thus, courts must also consider the harm to the market for
derivative works, which are defined as those markets that the creators of the
original work would in general develop or license others to develop. Castle
Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, 145
(2d Cir. 1998). In this analysis, “[a] market harm for licensing revenues will
only be recognized if the market is traditional, reasonable, or likely to be
developed and is not a protected transformative use.” Bill Graham Archives,
LLC., 386 F.Supp.2d at 333. The Second Circuit has explained that “by
developing or licensing a market for parody, news reporting, education, or
other transformative uses of its own creative work, a copyright owner plainly
cannot prevent others from entering those fair use markets.” Castle Rock
Enterprises v. Carol Publishing Group, 150 F.3d 132, 146 n.11 (2d Cir. 1998).
Here, Lovelace could not supplant demand for Deep Throat, because the
two films have entirely different subjects—one is a pornography and the other
21

is a critical biography. Instead, the issue in this fourth factor analysis is
whether Lovelace has harmed the market for derivative works of Deep Throat.
In its complaint, plaintiff alleges that it had licensed the use of Deep Throat to
the directors of the film Inferno, a film that like Lovelace, was to be about the
life of Linda Lovelace. Plaintiff alleges that once the entertainment press began
to report on the production of Deep Throat, funding for the film Inferno came to
an end. Ultimately, Inferno was never produced and plaintiff attributes
defendants’ alleged copyright infringement for this lost licensing revenue.
However, the court finds that plaintiff’s claim must fail because
defendants’ film Lovelace clearly constitutes a transformative use of the
copyright protected film Deep Throat. Accordingly, plaintiff cannot prevent
defendants from entering this fair use market. See Bill Graham Archives, LLC.,
386 F.Supp.2d at 333; Castle Rock Enterprises, 150 F.3d at 146 n.11.
Aggregate Assessment
In light of the factors discussed above, the court concludes that
defendants’ recreation of the three scenes from Deep Throat constitutes fair
use. Thus, defendants have not infringed upon plaintiff’s copyright protected
material.
Trademark Claims
Plaintiff has also brought the following three trademark claims against
defendants: (1) trademark infringement under 15 U.S.C. § 1114, (2) false

22

designation of origin under 15 U.S.C. § 1125(a), and (3) trademark dilution
under 15 U.S.C. § 1125(a). The court finds that these three claims fail as a
matter of law.
Trademark Infringement and False Designation of Origin
The standard for establishing a trademark infringement claim under 15
U.S.C. § 1114 is the same as the standard for establishing a false designation
of origin claim under 15 U.S.C. § 1125(a). Lois Sportswear, U.S.A., Inc. v. Levi
Strauss & Company, 799 F.2d 867, 871 (2d Cir. 1986); Twentieth Century Fox
Film Corporation v. Marvel Enterprises, Inc., 220 F. Supp.2d 289, 287
(S.D.N.Y. 2002). In either a claim for trademark infringement or false
designation of origin, a plaintiff can establish a prima facie case by showing
that defendant’s use of plaintiff’s trademark is likely to confuse consumers as
to the source of defendant’s product. Lois Sportswear, U.S.A., Inc., 799 F.2d at
871. Accordingly, the court will consider these two trademark claims together.
In its complaint, plaintiff alleges that defendants have infringed upon
plaintiff’s marks “Linda Lovelace” and “Deep Throat” in violation of 15 U.S.C.
§ 1114 by “advertising and distributing Lovelace, a movie whose title infringes
upon plaintiff’s Linda Lovelace mark, and advertising and promoting Lovelace
by repeated mention of plaintiff’s ‘Deep Throat’ movies and mark.” Compl. ¶ 83.
Additionally, plaintiff alleges that in violation of 15 U.S.C. § 1125(a),
defendants’ “use of ‘Lovelace’ and ‘Deep Throat’ are false designations of origin
which are likely to cause confusion, to cause mistake and to deceive as to the
23

affiliation, connection or association with plaintiff as to the origin, sponsorship,
or approval of Lovelace by plaintiff.” Id. ¶ 91.
Here, defendants’ conduct, as alleged, does not constitute trademark
infringement, or false designation of origin, because in its complaint, plaintiff
fails to plausibly allege that consumers are likely to be confused by defendants’
conduct. Pearson Education Inc. v. Allen Air Conditioning Co., et al., No. 08cv-6152 (KBF), 2013 WL 5870235, at *2 (S.D.N.Y. Oct. 2013). “A pleading that
offers labels and conclusions or a formulation recitation of the elements of a
cause of action will not do.” Pension Benefits Guarantee Corporation ex rel. St.
Vincent Catholic Medical Centers Retirement Plan v. Morgan Stanley
Investment Management Inc., 712 F.3d 705, 717 (2d Cir. 2013). In its
complaint, plaintiff has only set forth conclusory allegations of confusion; it is
has not set forth any reason as to why consumers would believe that plaintiff
was involved in the production of defendants’ film Lovelace.
Trademark Dilution
Federal law allows the owner of a “famous mark” to enjoin a person form
using “a mark or trade name in commerce that is likely to cause dilution by
blurring or dilution by transnishment of the famous mark.” 15 U.S.C. §
1125(c)(1). “Dilution by blurring” is an “association arising from the similarity
between a mark or trade name and a famous mark that impairs the
distinctiveness of the famous mark.” Id. § 1125(c)(2). The Second Circuit has
listed the following as classic examples of trademark dilution by blurring,
24

“Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova
gowns….” Starbucks Corporation v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97,
105 (2d Cir. 2009). “Dilution by blurring refers to the whittling away of the
established trademark’s selling power and value through its unauthorized use
by others.” Tiffany (NJ) INC. v. eBay Inc., 600 F.3d 93, 111 (2d Cir. 2010).
In contrast to dilution by blurring, “dilution by tarnishment” is an
“association arising from the similarity between a mark or trade name and a
famous mark that harms the reputation of the famous mark.” 15 U.S.C.
§ 1125(c)(2)(C). “This generally arises when the plaintiff's trademark is linked
to products of shoddy quality, or is portrayed in an unwholesome or unsavory
context likely to evoke unflattering thoughts about the owner's product.”
Tiffany (NJ) INC., 600 F.3d at 111 (quoting Deere & Co. v. MTD Prods., Inc., 41
F.3d 39, 43 (2d Cir.1994)).
Here, in support of its trademark dilution claim, plaintiff has set forth
allegations of both dilution by blurring and dilution by tarnishment. More
specifically, plaintiff has alleged that “defendants acts are in violation of 15
U.S.C. § 1125(c) in that they are likely to cause dilution by blurring the
distinctiveness of plaintiff’s famous marks Linda Lovelace and Deep Throat, all
to the irreparable injury to and damage of plaintiff.” Compl. ¶ 101 (emphasis
added). Similarly, plaintiff has alleged that “defendants’ acts are also in
violation of 15 U.S.C. § 1125(c) in that they are likely to cause dilution by
tarnishment by harming the reputation of Plaintiff’s famous marks Linda

25

Lovelace and Deep Throat, all to the irreparable injury to and damage of
Plaintiff.” Id. ¶ 102 (emphasis added).
The court finds that both of plaintiff’s trademark dilution claims must
fail as a matter of law. As mentioned above, “a pleading that offers labels and
conclusions or a formulaic recitation of the elements of a cause of action will
not do.” Pension Benefits Guarantee Corporation ex rel. St. Vincent Catholic
Medical Centers Retirement Plan, 712 F.3d at 717 (2d Cir. 2013). Once again,
plaintiff has only set forth bare-bones, conclusory allegations in support of
these claims that merely recite the elements of the cause of action. With
respect to dilution by blurring, plaintiff has not provided any basis for its
allegation that Lovelace impairs the distinctiveness of its marks “Linda
Lovelace” and “Deep Throat”. Along these lines, plaintiffs have also not
provided any basis for its claim that Lovelace has tarnished the reputation of
its marks “Linda Lovelace” and Deep Throat”.
Attorneys’ Fees
Defendants move for an award of costs and attorneys’ fees under 17
U.S.C § 505 of the Copyright Act. A court may award costs to any party (other
than the United States), and attorneys’ fees to a prevailing party in a copyright
action. 17 U.S.C § 505. In determining whether to award attorney’s fees,
courts are to consider several non-exclusive factors including frivolousness,
motivation, objective unreasonableness, and the need to advance
considerations of compensation and deterrence. See Muller v. Twentieth
26

Century Fox Film Corp., No. 08-Civ-02550 (DC), 2011 WL 3678712, at *1
(S.D.N.Y. Aug. 2011) (referencing Fogerty v. Fantasy, 510 U.S. 517, 534
(1994)). Defendants contend that given that plaintiffs copyright claims are
meritless and designed to stifle any public criticism of the film Deep Throat, the
court should award attorneys' fees.
While the court finds that plaintiffs copyright claims fail as a matter of
law, the court does not find that they are so unreasonable as to warrant the
award of attorneys' fees.

Conclusion
The court enters judgment for defendants and dismisses plaintiffs
complaint in its entirety. The court declines to award attorneys' fees to
defendants. This opinion resolves item #9 on the docket.

SO ORDERED.
Dated: New York, New York
August 25, 2014

USDCSDNY
DOCUMENT
BLECI'RONICALLY FILED
DOC#: _ _ _ __

DATEFILED:

....,...... ..

~,

25/zslli. x:
,, .

27