It’s almost Halloween, so we thought we would share an opinion from a case that involved the mask from the Scream movie franchise. It also involves a character named “Scary Terry,” but don’t worry, it’s not our own Terry Sanks.
The Court’s opinion in this lawsuit provides multiple valuable lessons for intellectual property owners, including takeaways to better position your products to be eligible for an umbrella of overlapping IP protection — for example, trademark, trade dress, and copyright protection for the same good(s). The case also provides many cautionary lessons on how important the underlying facts (and defendant) are when it comes time to assert a barrage of IP claims.
There is an inherent duty for an IP owner to “police” unauthorized uses of a trademark and copyright. However, when enforcing rights and asserting a buffet of claims founded on less-traditional IP (for example, the three-dimensional configuration of a Halloween mask, as discussed below) you must be extra cautious and avoid harming the IP and the ability to protect the IP moving forward. This requires thoughtful planning and foresight.
In this case, the Plaintiff, Easter Unlimited, Inc. dba Fun World, brought copyright infringement, trademark infringement, trademark dilution, and counterfeiting claims against professional NBA basketball player Terry Rozier based on Mr. Rozier’s use of the ghost mask popularized in the Scream movie franchise.
The U.S. Copyright Office provides a nice summary of the events leading up to the dispute, which arose circa. 2018:
“Terry Rozier is a professional basketball player. After acquiring a reputation as a ‘dangerous scorer’ and ‘fearless shooter,’ fans and sports media nicknamed Rozier ‘Scary Terry.’ Rozier created a clothing line that featured this nickname and a cartoon depiction of himself wearing a mask. Rozier specifically requested the mask used on the clothing be ‘the Scream mask.’ Rozier sold and authorized other entities to sell the Scary Terry clothing and received approximately $150,000 in gross sales revenue.” See: https://www.copyright.gov/fair-use/summaries/Easter-Unlimited-v-Rozier-18-cv-06637-E-D-N-Y-Sep-17-2021.pdf.
This is the cartoon depiction at issue:
The opinion we are dissecting in this post is the Court’s Order on cross-motions for summary judgment. In the Order, the Court denied Fun World’s motion for partial summary judgment in full while granting Defendant Rozier’s motion. It is a huge opinion, spanning 85 pages, and it provides excellent in-depth treatment of copyright and trademark infringement and defenses.
Copyright:
Fun World owns a “sculptural work” copyright registration over the ghost mask used in the Scream movies. The copyright registration has an effective date of February 23, 1993. (The first Scream movie came out in 1996.) According to the registration, the title of the “work” (the mask) is “ghost mask with shroud” and “Glow in Dark & Fluorescent – Item #9206/9207.”
As noted in the Opinion, to establish copyright infringement, a plaintiff must prove 1) ownership of a valid copyright, and 2) that the defendant copied constituent elements of the work that are original.
In this case, Mr. Rozier was able to find a very similar looking mask, called the Alterian Wailer mask in the Order, which was sold nationwide in 1991 – two years *before* the plaintiff in this case claimed its own mask was created.
Mr. Rozier also presented evidence that plaintiff Fun World had access to, and likely had seen, the Alterian Wailer mask before Fun World developed its own “Ghost Face” mask. If true, then the “originality” of the plaintiff’s mask would be in doubt. The Court acknowledged that this was enough of a concern to create a genuine issue of material fact as to whether the Ghost Face mask possessed enough originality to merit copyright protection. But, for purposes of the overall copyright infringement analysis, the Court presumed that Fun World’s copyright registration was valid.
The Court proceeded to the second element, whether or not the original elements of the work were copied, and stated the obvious – the mask in Defendant Rozier’s clothing line is indeed substantially similar to the Fun World Ghost Face mask. Rozier wanted to use the “Scream mask” which is the Fun World mask.
At this point, one would think that since the Court presumed that the copyright was valid and that the defendant copied the work, there must be infringement. But that is not what happened. Instead, the Court analyzed Mr. Rozier’s fair use defense. If a court finds that someone’s use of another’s copyrighted work satisfies the fair use defense, then there can be no infringement as a matter of law.
The Copyright Act describes four non-exclusive factors to consider in determining whether the use of a work constitutes a fair use:
(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;
(3) the amount and substantiality of the portion 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.
Easter Unlimited, Inc. v. Rozier, 18-CV-06637 (KAM), 32 (E.D.N.Y. Sep. 27, 2021).
The Copyright Office analysis of the case cited earlier in this post also provides a nice summary of what the Court found as to each of these factors:
“On the first factor, the purpose and character of the use, the court found that Rozier’s use was transformative, parodical, and satirical, which favored fair use. On transformativeness, the court determined that the purpose of Rozier’s use was to identify and connect fans with Rozier’s “Scary Terry” persona, which differed from the purpose of the original sculptural work. Although related to the licensed use of the Ghost Face Mask in Scream, rather than the original mask itself, the court concluded that Rozier’s use to “lampoon” the Scream killer could be seen as a parody commenting on the movie or the mask. In addition, the court found Rozier’s use provided a means of “satirizing and ridiculing the perception of ruthless, highscoring [NBA] athletes.” Lastly, the court determined that the importance of commerciality was diminished by the use’s transformativeness.
The second factor, the nature of the work, disfavored fair use due to the undisputed creative nature of Plaintiff’s Ghost Face Mask.
The court determined that the third factor, the amount and substantiality of the work used, was neutral because although the use involved copying a substantial portion of the mask, Rozier arguably needed to use the main features of the mask to achieve his intended purpose.
On the fourth factor, the effect of the use on the potential market for or value of the original, the court concluded that the two works occupied distinct markets – finding that the primary market of holiday and party consumers for the Ghost Face Mask would not be usurped by Rozier’s sports apparel. While the Court acknowledged that similar conduct, if widespread, could adversely impact Plaintiff’s potential market, those “hypothetical fair uses are not the type of contemplated use that would compel a finding” for Plaintiff. Concluding that the factors together favored fair use, the court granted summary judgment in favor of Rozier on the copyright infringement claims.”
So, despite having a presumably valid copyright registration and a defendant who admittedly copied the work in that registration, the plaintiff still lost on summary judgment. This case was ripe for the fair use defense given the manner in which the mask was used with the defendant’s products. Worse than simply (yet severely) damaging the case at issue, this summary judgment exercise exposed the potential weakness, if not invalidity, of the Fun World ghost mask copyright registration based on the existence of the earlier Alterian Wailer mask. This provides future potential infringers a head start on defensive arguments. The next time Fun World asserts its copyright registration against someone, what do you think the first thing that someone will do? Attack originality and argue that the Wailer mask was first. The copyright registration is significantly devalued after this Order. Could or should Fun World have known about this in light of the testimony that the creators of the Wailer Mask attended similar events and were in the same marketplace as Fun World when the respective masks were first produced?
This is a very big win for advocates of the fair use defense in copyright infringement cases. The court spent a lot of time explaining the distinct concepts of satire and parody. Copyright nerds and others interested in the history and application of satire and parody are well-served by reading this opinion in depth [LINK AGAIN]. The Court addressed the added wrinkle that Rozier was really commenting on the Scream movie, which licensed the mask, and not necessarily on the mask itself.
Trademark:
Fun World also brought trademark infringement and trademark dilution claims. Trademark infringement is concerned with preventing consumers from being confused about the source of goods or services. Fun World needed to prove, for example, that the way in which Mr. Rozier used Fun World’s trademark was likely to cause consumers to think that Fun World was responsible for Mr. Rozier’s goods.
The Plaintiff owns a trademark registration for the below logo mark.
See: https://tsdr.uspto.gov/#caseNumber=85442365&caseType=SERIAL_NO&searchType=statusSearch
The registration is in multiple classes, and it includes goods such as Halloween costumes, t-shirts, balloons, tabletop and hanging decorations.
The alleged infringement of the above mark is based on Mr. Rozier’s use of the Ghost Face mask on his clothing. Recall the below graphic is what Mr. Rozier’s clothing used:
The only element from the Fun World trademark registration is the cartoon representation of the mask in the overall Scary Terry illustration. It is not a traditional trademark vs. trademark infringement battle because Mr. Rozier’s use is not necessarily as a mark. Rather, it was a logo on clothing used in an arguably “ornamental” fashion that, ironically, might not be considered a trademark use by the USPTO. (See, i.e., “Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark” at https://tmep.uspto.gov/RDMS/TMEP/print?version=current&href=TMEP-1200d1e1688.html.)
The Court used its circuit’s Polaroid factors for the infringement analysis.
“The Polaroid test balances the following eight factors: (1) the strength of the trademark; (2) the degree of similarity between the plaintiff’s mark and the defendant’s allegedly imitative use; (3) the proximity of the products and their competitiveness with each other; (4) the likelihood that the plaintiff will “bridge the gap” between its established market and the defendant’s market by developing a product for sale in the defendant’s market; (5) evidence of actual consumer confusion; (6) evidence that the defendant adopted the imitative term in bad faith; (7) the respective quality of the products; and (8) the sophistication of the relevant population of consumers.”
Easter Unlimited, Inc. v. Rozier, 18-CV-06637 (KAM), 58-59 (E.D.N.Y. Sep. 27, 2021)
Ultimately, the Court found that not a single factor went in Plaintiff Fun World’s favor. Importantly, Mr. Rozier was not using anything from the Ghost Face registered trademark other than a cartoonish representation of the mask that appears in the mark. What Fun World really needed for a stronger trademark claim was a registration over just the mask itself – similar to how its copyright registration was just for the mask.
Lastly, Fun World brought a dilution claim. “Dilution” of a trademark is different than infringing a trademark. Trademark infringement is when consumers are confused about the source of goods. Dilution is about harm to the mark itself, regardless of consumer confusion. When one dilutes a mark, they are damaging the mark itself, either by “blurring” the distinctiveness and strength of the mark or by “tarnishing” the reputation of the mark, such as by associating it with something unwholesome or criminal.
Importantly, a mark must be famous to be entitled to dilution protection under the law. Famous marks are rare – they are the Exxons, the Fords, the McDonald’s and the IBMs of trademarks. Under the law, a famous mark is one that is widely recognized by the general consuming public of the United States as a designation of source for the goods and services. That is a very high standard, and in this case, the Court noted that the Plaintiff provided no proof of such recognition. And remember – the recognition would need to be between the Ghost Face mark trademark shown above and Fun World as a provider of masks to the public. Here, as noted by the Court and Mr. Rozier, any “fame” was based on the mask’s use as a prop in a movie. The registered Ghost Face trademark was simply not famous enough as a mark for dilution.
Again, a trademark registration over just the mask itself may have been helpful here (plus evidence that people associate the mask with Fun World and not just the Scream franchise).
(In January 2022, Fun World filed an appeal of the Order but then withdrew its own appeal request in May 2022. This indicates that the parties have likely settled the remaining issues in the case and that the case may be closed out soon.)
Conclusion:
When asserting a barrage of intellectual property claims, it is possible to overreach and damage the asserted IP as opposed to strengthening it. As we explained in our post about trademark protection for Sour Patch Kids candy, you can receive a trademark registration the shape, layout, or design of an item. This is called “trade dress,” and it is also available to the three-dimensional configuration of items like packaging containers and even Halloween masks. Unfortunately, as you’ll see in our next blog post, sometimes the attempts to rehabilitate or otherwise strengthen your IP at the USPTO can also have the contrary effect.
Businesses are better served by professionals who remain on the cutting edge of technology and the law. Hiring an attorney who can guide you through multiple avenues of protection is one important step in providing you with strategic IP solutions and not merely IP services.
Call or click here to get started on protecting your IP today.
