Authored by Christiana Lewis Barnhardt and B. Brett Heavner
Over the past few years, the world has witnessed an increasing 'tug of war' between authors/artists (artists) and publishers/media sources over the integrity of artistic works. Daily there are news stories of filmmakers, authors, or visual artists whose work has been edited or otherwise published in a form that they did not authorise. In some instances, this 'tug of war' is due to media self-censorship, intended to avoid offending some particular segment of the population. Recent examples have included a DVD sales and rental company offering 'clean' versions of major motion pictures (editing out profanity, sex, nudity, and drug use).1 Comedy Central, for example has edited an episode of its animated programme South Park to blur an image of Mohammed, and the Washington Post refused to publish an unedited August 2007 Opus cartoon that poked fun at Islamic fundamentalists.
The 'tug of war' is not confined to instances of censorship, however. For example, in 2006, after comedian Dave Chappelle abruptly decided to end his popular show, self-titled Chappelle's Show, Comedy Central defied Chappelle's express wishes by cobbling together a short (arguably unfunny) episode entitled Chappelle's Show: The Lost Episodes out of the few sketches that Chappelle had finished before he left.
Such unauthorised editing begs the question, 'What can artists legally do to protect the integrity of their works?' Copyright law protects artists' works from being destroyed or mutilated, as well as their right to reproduce and create derivative copies of their works.2 Copyright law, however, does not provide any legal recourse for artists when their works are substantially edited or altered after the copyright in the works are legally licensed or sold to a third party. Thus, some artists have explored the limits of trademark and unfair competition law, which offers protection regarding the source of the work. Unlike copyright law, section 43(a) of the Lanham Act provides that a person may be liable for unfair competition even after the copyright in the work is licensed or sold.
Section 43(a) protects artists in two distinct ways. Section 43(a)(1)(A) protects artists against confusion or deception as to the origin, sponsorship, or approval of their goods, services, or commercial activities.3 Section 43(a)(1)(B) protects artists against the misrepresentation of the nature, characteristics, qualities, or geographic origin of their goods, services, or commercial activities through commercial advertising or promotion.4 Thus, while section 43(a)(1)(A) protects against customer confusion regarding the source of artists' works, section 43(a)(1)(B) protects against third parties misrepresenting artists' works through commercial activity. In Gilliam v American Broadcast Company,5 and later Dastar Corporation v Twentieth Century Fox Film Corporation,6 the Second Circuit and Supreme Court considered whether section 43(a) could be used to protect the integrity of artists' works when they were altered without the artists' permission. Today, Gilliam and Dastar illustrate the scope of protection that unfair competition law may provide artists against the censorship and mutilation of their works.
Gilliam v American Broadcast Company
In Gilliam v American Broadcast Company, the Second Circuit explored unfair competition as a way to prevent artists' works from being altered without their authorisation. In Gilliam, British writers and television performers known as Monty Python entered into a broadcast agreement with the British Broadcasting Corporation (BBC) that granted the BBC the right to license Monty Python's television programmes to any overseas territory without Monty Python's permission. In 1973, the BBC licensed the rights to the Monty Python programs in the United States to the American Broadcasting Corporation (ABC). In its agreement with the BBC, ABC was permitted to edit the programmes 'for the insertion of commercials, applicable censorship or governmental … rules and regulations'.7 Based on these provisions, ABC cut nearly one-third of the show to omit 'offensive' and 'obscene' matter from the broadcast.8
When Monty Python viewed the programme before it was scheduled to air on ABC, however, it was 'appalled' at the discontinuity, 'mutilation', and general absence of humour that had resulted from ABC's editing.9 Soon after, Monty Python sued ABC under section 43(a) seeking an injunction to prohibit the broadcast of ABC's altered version of the programme. The district court denied the injunction and Monty Python appealed the district court's decision to the Second Circuit.
On appeal, the Second Circuit reversed, granting Monty Python's motion for injunctive relief.10 While the BBC license allowed ABC to edit the programme, the court held that Monty Python had an actionable claim under unfair competition law to prevent the presentation of its work to the public in a distorted form. The court found that the truncated versions of the Monty Python programmes violated section 43(a) because it created a false impression of the products' origin and represented to the public a distortion of the appellants' work that was actually a 'mere caricature' of their talents.11 The case did not reference specific subsections of section 43(a) in its analysis because at the time the Second Circuit ruled on Gilliam, Congress had not amended section 43(a) to separate (1)(A) from (1)(B).
Dastar Corporation v Twentieth Century Fox Films
After the Second Circuit's decision in Gilliam, it appeared that the courts had embraced the theory of moral rights or 'the right of the artist to have his work attributed to him in the form which he created it', under the Lanham Act.12 Thus, under section 43(a)(1)(A), artists were protected from confusion as to 'the origin' of their goods. The Supreme Court, however, dramatically narrowed this protection in Dastar Corporation v Twentieth Century Fox Films.13
In Dastar, Fox sued Dastar after Dastar purchased copies of Fox's television show Crusade in Europe and re-edited them into a new video set titled World War II Campaigns. The show Crusade in Europe was based on General Eisenhower's memoir of the Allied campaign in World War II that was published under the same name. Fox first aired the series in 1949, but did not renew the copyright. Consequently, the series entered the public domain in 1977.
In its suit against Dastar, Fox claimed that Dastar violated section 43(a)(1)(A) because marketing and selling Crusade in Europe as its own product without acknowledging its reliance on Fox's Crusade in Europe television series was a 'bodily appropriation' of Fox's television series 'sufficient to establish reverse passing off.'14 The district court and Ninth Circuit both granted summary judgment for Fox on its claim of trademark infringement. Dastar appealed to the Supreme Court.
In its decision, the Supreme Court analysed the phrase 'origin…of goods' in section 43(a)(1)(A).15 Although the district court and Ninth Circuit both relied upon this phrase to hold that Dastar's video confused consumers as to the 'source' or 'origin' of the video, the court found that the phrase 'origin of goods', as used in the Lanham Act was 'incapable of connoting the person or entity that originated the ideas or communications that the relevant "goods" embody or contain.'16 The court concluded the Act was designed to protect the 'producer of tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.'17 Thus, the court held Fox could not prevail on its Lanham Act claim because Dastar was the 'origin' of the products it sold on its own.18
Before holding that Dastar could not prevail on its section 43(a)(1)(A) claim, however, the court expressly stated that creators could still seek protection under copyright law, as well as under the false advertising prong of section 43(a)(1)(B) of the Lanham Act.19 The court explained that had Fox renewed the copyright in the Crusade television series 'it would have been an easy claim of copyright infringement.'20 Moreover, the court stated that Fox may still have a cause of action, not for confusion as to the source of the work, 'but for misrepresentation under the "nature, characteristics, [or] qualities" provision of §43(a)(1)(B)' if the producers of the video, which substantially copied from the television series, gave purchasers the impression it was different from the Crusade series.21
Post-Dastar Commentary and Analysis of the Lanham Act
Although Dastar clearly holds that artists do not have the right of attribution under section 43(a)(1)(A), artists may still be able to rely on the court's holding in Gilliam to disassociate themselves from their work that has been significantly altered without their permission. In fact, a few courts have insinuated that a similarly-situated plaintiff could rely on Gilliam to state a claim under section 43(a)(1)(A) if the unauthorised use of the plaintiff's name was used to suggest that the plaintiff approved of his or her modified work.22
As a practical matter, however, it would indeed be a rare case in which misappropriation or unauthorised editing would implicate section 43(a)(1)(A)'s protection against confusion as to 'origin' without also implicating section 43(a)(1)(B)'s protection against false advertising. Section 43(a)(1)(B) provides arguably broader protection, since the unauthorised alteration of artists' works may not confuse consumers as to the origin of the works (as required by section 43(a)(1)(A)), but might change the nature, characteristics and/or qualities of the works that the artists originally intended (as provided by section 43(a)(1)(B)). Accordingly, other commentators suggest that cases with similar facts to Gilliam more appropriately fit within the 'false advertising prong' of section 43(a)(1)(B).23
Counseling Your Client on Gilliam and Dastar
Although neither Dave Chappelle nor the creators of South Park pursued trademark violations under the Lanham Act (perhaps due to the terms of their contract or in an effort to maintain a good relationship with Comedy Central), the question remains, 'Could these artists have argued that Comedy Central's edits to their shows presented their work "to the public in a distorted form" and thereby violated the Lanham Act?'24 What should an attorney advise clients who believe their work has been mutilated? Conversely, how should an attorney interpret Gilliam and Dastar for media clients who ask for guidance about censoring or imposing unauthorised edits on a work it plans to publish or broadcast? To advise such clients appropriately in a post-Dastar environment, counsel should ask the following key questions:
- What are the terms of the contract between the artists and publishing or broadcast media?
- Who do consumers recognise as the originator of the work that has been or will be altered?
- The "Is it still funny?" test
- Does your client have a realistic view of possible remedies?
What are the Terms of the Contract Between the Artists and Publishing or Broadcast Media?
First, if there is a contract between the artist and the publisher or media source, consider the terms of the agreement. Does the artist have the final right of approval before the work is ultimately published? If so, and the work was published without consent, the artist may also have a breach of contract claim in addition to a Lanham Act violation.
Also consider whether the contract terms provide exceptions to amend the artist's work because of government or media regulations. If the contract does allow for publisher or media sources to amend the work for government or media regulations, consider whether the edits made to the work were made in accordance with those regulations. If the contract does not include such exceptions for regulations, determine whether the contract provides the publisher or media source with the artistic license to change or amend the work as it sees fit.
Who do Consumers Recognise as the Originator of the Work that Has Been or Will Be Altered?
This is an important point from your client's viewpoint because it goes directly to how the artist was harmed by the modified work. As noted above, the Second Circuit held in Gilliam that it was Monty Python who suffered as a result of the work's mutilation, not ABC, because the public understood that the show was written and performed by Monty Python.25 In Dastar the court held no such injury existed because consumers were not confused about the source of the Crusade in Europe series. Unlike Monty Python in Gilliam, purchasers of the Crusade in Europe series did not associate Fox as the creative talent behind the series. Similarly, when counseling your client, the artist must also be known as the originator of the work to prevail. Otherwise, he or she cannot argue that his or her business or personal reputation has been harmed by the work's alteration. Even where the artist is clearly known as the originator of the work, the restrictive language of Dastar suggests that counsel for an aggrieved artist would be well advised to also pursue a false advertising claim under section 43(a)(1)(B) as a back-up if possible.
The 'Is It Still Funny?' Test
The key issue when answering all of these questions, however, is whether the work at issue has been so altered that it no longer represents the artist's original work. When viewed in the work's entirety, the alterations of the artist's work must be substantial. Changes to the work that leave the meaning and integrity of the work intact will not be enough to assert a false designation of origin claim under section 43(a)(1)(A). As stated in Gilliam, the changes must be so great that your client is 'subject to criticism for work he [or she] has not done.'26 In the analysis, you should consider whether the changes to the work significantly altered the meaning or the concepts the artist was trying to convey. Works that have been modified so much that jokes are no longer humorous or the point of the work is incomprehensible may be considered 'substantial' alterations. The court, however, will probably not consider alterations that do not significantly change the context or meaning of a work as being violations of the Lanham Act.
Does Your Client Have a Realistic View of Possible Remedies?
Clients who feel that their work has been significantly altered and want to pursue a Lanham Act claim should be aware of their available remedies. First, if there is a contract, consider its terms to determine whether it includes potential remedies in the case of infringement. If the agreement is silent on this issue, however, the artist should have a realistic view of available remedies the court may award if infringement is proved. Generally, as in Gilliam, courts will not award damages, but instead will grant an injunction against further publication of the work. You should also discuss with your client whether a permanent injunction or destroying the modified work is sufficient to protect his or her reputation.
Courts may also order the infringing party to issue a disclaimer with the work that expressly states that the work is not sponsored by or associated with the artist. If your client is satisfied with a disclaimer, you should discuss what language the disclaimer should include and how the disclaimer should be published.
Preserving Integrity
As artists' works are increasingly being altered (justifiably or not) by publishers and media outlets, artists are likely to look to section 43(a) as a tool to preserve the integrity and reputation of their works. While the Supreme Court's Dastar decision does limit artists' ability to look to the Lanham Act to create a right of attribution, the Lanham Act remains a powerful weapon for artists. Section 43(a)(1)(A) may still provide protection against heavily edited works that confuse consumers as to its 'origin', and the false advertising prong of section 43(a)(1)(B) protects against misrepresentations as to the character and quality of the edited works. Counsel for both artists and media/publishers would be well advised to become familiar with the Lanham Act in counseling clients in situations involving the unauthorised editing or revision of a work prior to publication, display, or broadcast.
Endnotes
1 Clean Flicks of Colorado LLC v Soderbergh, 433 F Supp 2d 1236 (D Colo 2006).
2 The Copyright Act of 1976, 17 USC §106(a).
3 The Trademark Act of 1946, 15 USC §1125(a)(1)(A).
4 The Trademark Act of 1946, 15 USC §1125(a)(1)(B).
5 538 F2d 14 (2d Cir 1976).
6 539 US 23 (2003).
7 Gilliam 538 F2d at 18.
8 Id.
9 Id.
10 Id. at 26.
11 Id. at 25.
12 Id. at 24.
13 539 US 23 (2003).
14 Id. at 28.
15 Id. at 31-32.
16 Id.at 32.
17 Id. at 37.
18 Id . at 38.
19 Id. at 37-38.
20 Id. at 38.
21 Id.
22 Auscape Int'l. v Nat'l Geographic Soc'y, 409 F Supp 2d 235, 251 (SDNY 2004) (identifying author does not violate § 43(a)(1)(A), but suggesting approval of a substantially modified work without the author's consent 'would be another matter'); Board of Managers of Soho Int'l Arts Condo v City of New York, No. 1 Civ.1226 DAB, 2003 WL 21403333 at *18 (SDNY June 17, 2003) (an artist may have claim under § 43(a)(1)(A) when her work was altered without her permission, although removal of work from display mooted issue); Zyla v Wadsworth, 360 F.3d 243, 251 (1st Cir 2004) (distinguishing facts of plaintiff's § 43(a)(1)(A) claim from one where plaintiff's work was substantially altered without her permission).
23 Judge Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §27:83 (2006) (stating that '[c]ases like Monty Python probably fit within §43(a)(1)(B) "false advertising" prong as being a misrepresentation of "the nature, characteristics [or] qualities" of a product.')
24 Gilliam, 538 F2d at 24.
25 Id. at 24.
26 Id.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes and is not intended to constitute legal advice. This memorandum may be considered advertising under applicable state laws.
