Tuesday, March 25, 2014

The Shadow Tells a Story: Teller Gets Summary Judgment for Copyright Infringement of His “Shadows” Illusion

By Professor Jay Dougherty

As I wrote about in a blog in 2012, magician, Teller, half of the famous “Penn & Teller” duo, brought an interesting and perhaps unprecedented copyright infringement claim against a Dutch magician, Gerard Dogge, who made of video of a “strikingly similar” illusion, posted it on Youtube and offered to sell DVD’s and reveal the “secret” of the illusion (which, in this case he appears to claim is different from Teller’s method). After several procedural rulings since then, in a decision on March 20,2014, Judge Mahan in the U.S. District Court for the  District of Nevada gave summary judgment to Teller on the copyright infringement claim, finding that Dogge had essentially admitted access, and there was not even a genuine issue of material fact on “substantial similarity” under both the “extrinsic” (objective) and “intrinsic” (more subjective, “total concept and feel”) tests used in the Ninth Circuit.  Teller v. Dogge (2:12-CV-591 JCM)(D.Nev., 2014).

Magicians incur many obstacles in trying to protect their illusions by copyright law. The “method” or “system” embodying the illusion won’t be protected (although some have qualified for patent protection), nor will the abstract “ideas” and commonplace “scenes a faire.” As Judge Mahan pointed out here, “While Dogge is correct that magic tricks are not copyrightable, this does not mean that ‘Shadows’ is not subject to copyright protection... The mere fact that a dramatic work or pantomime includes a magic trick, or even that a particular illusion is its central feature does not render it devoid of copyright protection.”

However, there is a rich history of magicians embedding illusions within a dramatic work (see my article, “Now You Own It, Now You Don’t:  Copyright and Related Rights in Magic Productions and Performances,” which was published in a book called “Law and Magic:  A Collection of Essays” (ed. C. Corcos, Car. Acad. Press,  2010). See here.

Those dramatic works would be protected by copyright as much as any other similar dramatic work not containing magical illusions. Teller registered his “Shadows” illusion, which has been described as his “signature” illusion, for copyright as a “dramatic pantomime” in 1983. His deposit copy was a fairly detailed short script describing the illusion, in which the magician appears to cut the leaves and flowers from a rose without touching it, by cutting a shadow of that rose.  Prior to our current Copyright Act, choreography (and presumably pantomime) could only be protected if a court found it qualified as a “dramatic work.” Much modern choreography does not tell a story, and is not dramatic. It would not have received copyright protection under the law before 1978. Neither choreography nor pantomimes were expressly listed as categories of potentially copyrightable works in the prior Copyright Act. But both are clearly now protectable under the Act, without the need to be “dramatic,” i.e. tell a story. I am not aware of any other reported case involving pantomime, but it is an expressly listed form of potential copyright subject matter in the current U.S. Copyright Act.  Pantomime is not defined in the Act, but the Copyright Office has long described it as “the art of imitating or acting out situations, characters, or some other events with gestures and body movement.” Teller hedged his bets by registering his illusion as “dramatic pantomime.” The District of Nevada judge seemed to treat “Shadows” more as a dramatic work, contrasting the elements typically used in cases involving literary works, screenplays and plays in his “substantial similarity” analysis.  Not all of those elements should need to be compared as between two pantomimes that are not “dramatic,” i.e. that don’t tell a story with a plot and dialogue. But many other of those elements seem appropriate for analyzing substantial similarity between pantomimes (at least to the extent they make sense as to literary works) -- e.g., themes, mood, setting, pace, characters, and sequence of events. The judge correctly observed the various elements not protected by copyright in a work (e.g. the method or system). Indeed, Dogge tried to argue that substantial similarity was lacking because he allegedly uses a different method to achieve the illusion than Teller. The judge rejected that assertion, saying “In discerning substantial similarity, the court compares only the observable elements of the works in question. Therefore, whether Dogge uses Teller’s method, a technique known only by various holy men of the Himalayas, or even real magic is irrelevant, as the performances appear identical to an ordinary observer.” Differences in minor details also failed to create an issue of material fact. The judge denied summary judgment as to whether the infringement was willful for purposes of statutory damages, and as to a Lanham Act false endorsement claim, but awarded attorneys’ fees.

One would have liked to see the judge take this on purely as a pantomime case. That will no doubt come to a court in a future case where a distinctive illusion is less “dramatic” than Teller’s, although for now it would seem that magicians (and their lawyers) will benefit by conjuring up copyright registration for both the dramatic and the pantomime non-dramatic elements, and, as they did throughout the centuries, embedding their illusions, like special effects, in a larger dramatic context.

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