COURT PULPS COPYRIGHT CLAIM IN PULP FICTION CASE
In a case illustrating the importance of making timely copyright claims, the U.S. District Court for the Central District of California dismissed a photographer’s claim that the iconic “Mia Wallace” poster for the 1994 Quentin Tarantino Pulp Fiction infringed the photographer’s copyright in a photo that was the basis for the poster. Zahedi v. Miramax LLC, No. CV 20-4512 (C.D. Cal. Nov. 24, 2021).
In 1994 photographer Firooz Zahedi took several photos of Uma Thurman in character for her role as femme fatale Mia Wallace in Pulp Fiction. The photos showed Thurman wearing a dark dress and lying on her front in a bed with a handgun and a paperback book in front of her, her legs raised behind her, her ankles crossed, and high-heel shoes on her feet.
Miramax Film Company (Miramax), the studio that produced Pulp Fiction, used one of Zahedi’s photos as the basis for a poster to advertise the movie at the 1994 Cannes Film Festival (where the movie won the award for Best Picture) and for the film’s theatrical release later that year. In creating the poster Miramax made some changes from Zahedi’s photo such as changing the position of the handgun on the bed in front of Thurman.
Miramax registered the copyright in the poster in 2003 without crediting Zahedi as a contributor. In 2015 Zahedi received a Mia Wallace action figure as a gift, and the packaging for the figure prominently displayed the poster and had a Miramax copyright notice. His stepson posted a photo on Instagram of Zahedi holding the action figure.
In 2019, after seeing how the image of the poster was appearing on other items of merchandise, including T-shirts and socks, Zahedi registered his copyright in the photo and contacted Miramax to discuss the situation. The following year he filed a lawsuit for copyright infringement against Miramax, LLC, the entity to which the copyrights in a number of films, including Pulp Fiction, had been assigned.
In its decision the court said that “the parties offer irreconcilable stories regarding how the photograph was created.” Miramax claimed that it had “developed the concept for the image and hired Zahedi to execute its vision, buying out all rights.” Miramax also claimed that it had required Zahedi to execute a work-for-hire agreement but was unable to produce a copy of the agreement.
In contrast, Zahedi claimed that “he set up the shoot in his studio, hired a props director, selected Ms. Thurman’s shoes, and shot a series of photographs.” He said that he did not execute a work-for-hire agreement or other buyout agreement because Miramax “didn’t do contracts.” Zahedi’s position was that he orally licensed to Miramax the right to use the photograph for the poster but did not otherwise grant a Miramax a license to use the photo.
A civil action for copyright infringement must be brought “within three years after the claim accrued.” 17 U.S.C. § 507(b). There is an exception if a plaintiff lacked knowledge of the infringement prior to the three-year period preceding filing suit and that lack of knowledge was reasonable. Starz Entertainment, LLC v. MGM Domestic Television Distribution, LLC, 510 F. Supp. 3d 878, 888 (C.D. Cal. 2021) (citing Polar Bear Productions, Inc. v. Timex Corp., 384 F.3d 700, 706 (9th Cir. 2004)).
But the court noted that the Ninth Circuit distinguishes between “infringement” claims and “ownership” claims. The court said that ownership claims accrue only once, at the time when plain and express repudiation of co-ownership is communicated to the claimant, and are barred three years after the time of repudiation (citing Pak’s Trading Europe B.V. v. Target, No. SA CV 18-536-DOC (DFMx), 2018 WL 8333362, at *5 (C.D. Cal. July 5, 2018) (other citation omitted).
“Where the gravamen of a claim is ownership,” the court stated, “the statute of limitations will bar a claim if (1) the parties are in a close relationship and (2) there has been an ‘express repudiation’ of the plaintiff’s ownership claim” (citing Seven Arts Filmed Entertainment Ltd. v. Content Media Corp. PLC, 733 F.3d 1251, 1256-57 (9th Cir. 2013)). The court found that because Zahedi took the photo at Miramax’s request, gave Miramax at least an oral license to use the photo, and knew about Miramax’s use of the photo, the parties had a close relationship.
Next the court considered Zahedi’s arguments that Miramax had not expressly repudiated his claim to own the copyright in the photo. First, Zahedi argued that Miramax’s copyright registration for the poster did not constitute an express repudiation because the application asserted ownership of a “2 Dimensional artwork,” not a photo. Second, he argued that Miramax did not expressly repudiate his claim by using its own copyright notice on items featuring the poster because Miramax credited Zahedi as the copyright holder of the photo on the cover of the Pulp Fiction script. Third, he argued that Miramax’s failure to pay him royalties for its use of the photo does not constitute an express repudiation of his ownership.
The court said it was “skeptical” that Miramax’s copyright registration constituted express repudiation but added that the court “need not decide whether Zahedi had constructive notice of Miramax’s repudiation, because he had actual notice” (emphasis in original). The court stated that “[w]here, as here, Zahedi actually knew that Miramax was exploiting a photograph of which he claimed ownership without giving him credit or royalties, his failure to bring suit to assert his ownership rights is fatal to his case” (citing Gaiman v. McFarlane, 360 F.3d 644, 654 (7th Cir. 2004) (reasoning that a copyright notice affects only the accrual of an ownership cause of action if the victim actually reads it); other citations omitted).
The court pointed to Zahedi’s 2015 receipt of the Mia Wallace action figure “prominently featuring the iconic photo, bearing Miramax’s copyright notice, and failing to credit Zahedi” as “uncontroverted evidence of his actual knowledge of Miramax’s plain and express repudiation of his ownership.” That meant Zahedi had to file his copyright lawsuit by 2018 at the latest to avoid being barred by the three-year statute of limitations. For that reason the court granted Miramax’s motion for summary judgment and dismissed the case.
[Image of poster appears below.]
SERIOUS SANCTIONS IMPOSED ON FOREIGN TRADEMARK FILER
As published in the INTA Bulletin on January 19, 2022
The United States Patent and Trademark Office (USPTO) has taken the unusual step of imposing sanctions on a foreign company and its executive director for their “conduct involving submission of thousands of documents in trademark matters in violation of the USPTO’s rules of practice in trademark matters … and USPTO website terms of use.” In re Zhang, Dec. 10, 2021, Gooder, D.
On June 8, 2021, the USPTO’s Deputy Commissioner for Trademark Examination Policy issued an order requiring Shenzhen Huanyee Intellectual Property Co., Ltd. (Huanyee) and Yusha Zhang, Huanyee’s executive director (respondents), to show cause why they should not be sanctioned for such conduct. The respondents submitted a response to the show-cause order on July 6, 2021. After considering the response, the USPTO Director found that imposing the sanctions proposed in the show-cause order was appropriate.
According to the USPTO’s sanctions order, “Respondents have been involved in filing submissions in more than 15,000 trademark matters before the USPTO.” In connection with those filings, the order states, “Respondents have engaged in the unauthorized practice of law, provided false domicile information for applicants, impermissibly entered the signature of the named signatory on declarations and verifications, and violated other USPTO Rules and the USPTO’s website terms of use.” The sanctions order says that the response to the show-cause order either does not address such conduct or concedes that the respondents engaged in it.
The sanctions that the USPTO imposed included termination of “all trademark application proceedings involving submissions by Respondents or filed through a uspto.gov account registered to or controlled by Ms. Zhang or any officer, employee[,] or agent of Huanyee.” The records for all affected applications and registrations will be updated to include the sanctions order, and “[a]ny pending post-registration submissions will be given no weight.” Moreover, “Ms. Zhang and any employees, officers, or agents of Huanyee may not prepare, sign, or submit trademark-related documents on behalf of others under any circumstances.”
To prevent the respondents from making further U.S. trademark filings, the USPTO plans to “remove correspondence information associated with Respondents in the USPTO electronic records for all affected applications and registrations in due course.” And finally, the USPTO directed its Office of the Chief Information Officer to deactivate permanently “any USPTO accounts in which contact information related to Respondents appears” and “to take all reasonable efforts to prevent Respondents from creating or activating further.”
The USPTO’s sending of an email notice about this decision despite the respondent’s claim that “the Privacy Act [5 U.S.C. § 552a] absolutely prohibits disclosure of information concerning this matter” may indicate that the USPTO hopes the severe sanctions it imposed in this case will deter or at least discourage other foreign firms from engaging in similar prohibited conduct.