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IP/Entertainment Case Law Updates

StudioCanal Image S.A. v. Reason Pictures, LLC, C.D. California

In copyright and trademark infringement suit, the district court granted in part and denied in part the defendants’ motion to dismiss.

The defendant movie producers made a movie called “Son of Rambow” about two boys in the English countryside who watch “First Blood” and decide to make their own version of the movie. The defendants obtained a clip license from the plaintiff to use certain clips from “First Blood” in their movie. The parties were also negotiating for the plaintiff to acquire an option to distribute the defendants’ movie, but negotiations ceased when the defendants exhibited their movie at the Sundance Film Festival, despite the plaintiff’s objections.

The plaintiff filed suit for copyright infringement, claiming the defendants exceeded the scope of the clip license and that the two movies are substantially similar. The plaintiff also claimed that the defendants’ use of the name and image of Rambo infringed their trademark rights, and that the defendants violated California’s unfair competition statute by negotiating for a low clip license fee with the understanding that the plaintiff would acquire an option to distribute the film and then not completing an option agreement.

The defendants moved to dismiss the complaint and the court started with the copyright infringement claim relating to the defendants’ use of the clips from “First Blood”. The court rejected the defendants’ argument that a use of licensed material that is inconsistent with the license agreement should be brought as a breach of contract claim, and said that any use that exceeds the scope of a copyright license can form the basis for a copyright infringement claim.

The court analyzed each of the four specific instances where the defendants’ use of the clips allegedly exceeded the scope of the clip license. The court held that two of the uses did not constitute copyright infringement: use of two clips of dialogue used out of order (when the clip license did not indicate that the dialogue clips had to appear in a certain order) and use of a clip several times in a montage (when the clip license did not specify a specific scene in “Son of Rambow” where the clip should appear). Because the clip license did not specifically prohibit how the defendants used the clips in these instances, the court granted the defendants’ motion to dismiss these claims. Two other uses of clips were found to exceed the scope of the license because the defendants edited the background of the clips and the clip license specifically prohibited any editing of the licensed material. The court denied the defendants’ motion to dismiss these claims.

The court then turned to the plaintiff’s claim that the two movies were substantially similar and explained that a court can dismiss a copyright infringement claim at the pleading stage where no substantial similarity between the works exists. The court applied the “extrinsic test” which objectively measures the “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” The court provided a detailed examination of each of the listed elements of both movies and concluded that that the two works are not substantially similar.

Regarding plot, the court wrote that “First Blood” is a dramatic action film featuring a Vietnam veteran trying to evade capture while having flashbacks of being tortured, while “Son of Rambow” is a light and heartwarming coming-of-age comedy about two boys who see the movie “First Blood” and decide to make their own version of it. Even though the characters in “Son of Rambow” recreate some of the action sequences from “First Blood,” the court wrote that the boys’ recreations are humorous which “is contrasted with First Blood’s serious execution of flawless and dramatic action sequences.” The court also noted differences in the plot structure of the two movies and wrote that “Son of Rambow” contains many scenes involving the two boys and their families, schools, and religious organizations while “First Blood” shows the main character acting alone until the very end of the movie when he confronts his former colonel.

Regarding the characters, the court did not find similarities between the characters Rambo (“a former green beret who is haunted by the torture and violence he experienced in Vietnam”) and Will (a young English boy who comes from a strict religious upbringing and who grows more independent from his religious family and develops a close friendship with Carter while making their version of “First Blood”). The court also noted the difference in physical appearance between Rambo who has “bulging muscles” and Will, who is short and slight. The court went on to describe how the two movies differ in dialogue, theme, mood, setting, pace and sequence of events and concluded that the works are not substantially similar.

Next, the court addressed the plaintiff’s claim that the title “Son of Rambow” infringes its trademark rights. The parties agreed that the question of whether the title dispute is arbitrable under the MPAA’s Title Bureau Registration arbitration clause should be decided by an arbitrator, so the court stayed the trademark infringement claim that related to the title. The court denied the defendants’ motion to dismiss the trademark infringement claims that did not relate to the title, saying that it was reluctant to adjudicate the issue of likelihood of confusion at this stage.

Finally, the court denied the defendants’ motion to dismiss the plaintiff’s unfair competition claim. The plaintiff argued that it agreed to license clips from “First Blood” for a low fee with the understanding that the parties would enter into another agreement providing the plaintiff with certain distribution rights. According to the plaintiff, the defendants later reneged on that promise by signing a distribution agreement with Paramount Pictures. The court stated that this conduct, if true, would be considered unfair because the defendants allegedly acted in bad faith in negotiating a lower licensing fee and not keeping its promise of making another agreement with the plaintiff.