Archives for posts with tag: mutant

This 2005 tax case involved three movies with Ninja in the title. It is also the only federal case with both “ninja” and “zombies” in the opinion – See ZombieLaw: “Astro Zombies in Tax Law” for a prior writeup of this case: Santa Monica Films v. IRS.

SANTA MONICA PICTURES, LLC, PERRY LERNER, TAX MATTERS PARTNER, * Petitioner v. COMMISSIONER OF INTERNAL REVENUE, Respondent CORONA FILM FINANCE FUND, LLC, PERRY LERNER, TAX MATTERS PARTNER, Petitioner v. COMMISSIONER OF INTERNAL REVENUE, Respondent

Nos. 6163-03, 6164-03
UNITED STATES TAX COURT
T.C. Memo 2005-104; 2005 Tax Ct. Memo LEXIS 104; 89 T.C.M. (CCH) 1157

Opinion by Judge Michael Thornton, filed May 11, 2005

The following film titles and development projects were listed in Schedule 1.6(b) of the exchange and contribution agreement as assets of SMHC:

57. Ninja Hunt

58. Ninja Showdown

59. Ninja Squad



All three are listed by the Court as 1987 movies (though IMDB suggests 1986). The Opinion also reveals that they were originally in the “EBD film library”. They were then sold. The Court notes difficulties in determining the market price of movies because of issues finding comparable films. For comparison noting the movie “Teenage Mutant Ninja Turtles”.

in 1993, New Line sold 200 features to Turner Broadcasting for $ 500 million ($ 2.5 million per title); … in 1997, Orion/Samuel Goldwyn sold 2,000 features to MGM for $ 573 million ($ 286,500 per title).

[footnote #135]:
The film library that New Line sold to Turner Broadcasting included the film titles: “Teenage Mutant Ninja Turtles“, “Misery”, and “City Slickers”. The film library that Orion/Samuel Goldwyn sold to MGM included the Academy Award-winning film titles: “Amadeus”, “Platoon”, “Dances With Wolves”, and “The Silence of the Lambs”.

The point is that these movies are not particularly comparable. The transactions involved shifted the losses from failed movies and were deemed to be a tax shelter. The Court here upholds the IRS ruling over the studio’s arguments.

This is, of course, not the first NinjaLaw Federal case to mention the Teenage Mutant Ninja Turtles, nor to mention them even though they are not necessarily relevant to the particularities of the case. Here in 2005, the Turtles movie is listed among a number of modern classics and blockbuster successes.

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In 1994, The Burger King Kids Club teamed up with the Teenage Mutant Ninja Turtles to summarily dismiss a claim by the Curious Kids, an unproduced idea that claimed to be the original version of a multi-ethnic, multi-racial cartoon.

CK COMPANY, Plaintiff, v. BURGER KING CORPORATION and SAATCHI & SAATCHI ADVERTISING, INC., Defendants.
92 Civ. 1488 (CSH)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1994 U.S. Dist. LEXIS 13934; Copy. L. Rep. (CCH) P27,325
Decided – September 29, 1994

Judge Haight for the Court explains:

In this copyright action, defendants move for summary judgment pursuant to Fed. R. Civ. P. 56 to dismiss plaintiff’s complaint. Plaintiff claims that Burger King’s “Kids Club,” a series of child cartoon characters featured in Burger King commercials and in-store promotional materials, infringes on plaintiff’s unproduced proposal for television commercials and specials featuring its own group of child cartoon characters called the “Curious Kids.” Defendants claim that Burger King’s Kids Club lacks any substantial similarity to the protectable elements of the Curious Kids.

The Court continues:

This case presents the familiar copyright question of substantial similarity in the novel context of two groups of multi-ethnic, multi-racial cartoon children.

WAIT, what? HAHA. It’s 1994. And so “multi-ethnic, multi-racial cartoon children” is a “novel context” HA! Dora the Explorer won’t air for another six years.

Explaining the characters in question:

The characters in the Burger King Kids Club, in contrast [to the plaintiff’s characters, the Curious Kids], are extreme stereotypes. The commercials and promotional materials before the Court portray the Kids Club personalities as one-dimensional cartoons. The tone of defendants’ commercials demonstrates the lightweight, playful nature of the Kids Club. While the Curious Kids deal with significant social issues, the Kids Club deals with issues no more weighty than how children can obtain promotional items such as Teenage Mutant Ninja Turtle badges, plastic toy hamburgers, fries, or shakes at participating Burger King restaurants.

Continuing about the Kids Club:

The visual presentation of the Kids Club commercials demonstrates the fundamental differences in tone and structure between the Kids Club and the Curious Kids. The Kids Club commercials rely on special effects and highly stylized graphics. These commercials show the Kids Club members being magically transported in and out of different places, soaring through the air on a flying cheeseburger, ducking to avoid self-propelled french fries and milk shakes that fly into paper bags, and zapping Teenage Mutant Ninja Turtles with a stun ray.

Continuing to contrast, the Court notes:

while the Curious Kids wear normal, everyday clothes typical for young teens, the Kids Club members each wear highly stylized outfits exaggerating their stereotypical character type. For example, Kid Vid is outfitted with a plethora of remote controls, headphones, portable stereo equipment, and some type of goggles, and Wheels wears a spacesuit. This magical, high-tech style contrasts with the realistic portrayal of the Curious Kids.

Is that why the Court has twice highlighted the TMNT connection? This is not the first time a Federal Court opinion has unnecessarily mentioned a Ninja Turtle promotional item – See previous NinjaLaw posts about TMNT in cola wars and TMNT in ooze products and TMNT in movie distribution. Is it used in these cases to set the social context or just because judges like ninja turtles? In the Kids Clubs case is it used to further the pronouncement of exaggerated stereotypical character types? Is TMNT, in this way, an early example of multi-ethnic, multi-racial cartoon characters? At the very least they seem to be important supporting characters.

Conclusion of the Court:

Defendants have established that any similarities between the Kids Club and the Curious Kids relate only to unprotectable elements, and that no reasonable jury could find the works substantially similar. Defendants are therefore entitled to judgment as a matter of law.

A rehearing of this case was denied and the appellate court affirmed by the Second Circuit (122 F.3d 1055) without issuing an opinion.

I love when Judges decide that no reasonable jury could find a work similar. In this case the proof of copying was weak, the plaintiff’s characters had never been produced and the connection between the plaintiff’s and Burger King’s advertising agency was tenuous. But the Court does not decide there is no copying, rather that there were no protectable elements of intellectual property. The idea of a group of multi-ethnic, multi-racial characters with one in a wheelchair, is not protectable – or else surely one of these parties might own rights to Glee too.

Note the Court also wrote:

given racial and gender stereotypes of leadership it is unfortunately no surprise that the only white, male, non-handicapped, non-“nerd” member of each group assumes the leadership role. See Selmon v. Hasbro Bradley, Inc., 669 F. Supp. at 1272-73 (not unusual that lion-like creature assigned role of “king of the jungle”).

wheels artie arty glee

burger king kids club glee cartoon

glee cartoon kids club

Judge Haight’s opinion in the Kids Club case has been cited six times for the following propositions:

1) “Copyright law will not protect characters where ‘it is virtually impossible to write about a particular fictional theme without employing certain stock or standard literary devices.’ … theme of diverse group of children sharing adventures unprotectible under copyright law” in Robinson v. Viacom 1995 U.S. Dist. LEXIS 9781, Copy. L. Rep. (CCH) P27480 (S.D.N.Y. July 13, 1995)

2) “concepts and ideas may not be copyrighted, and that only a particular expression of an idea may be copyrighted.” Proctor and Gamble v. Colgate-Palmolive and Young and Rubicam, 1998 U.S. Dist. LEXIS 17773 (S.D.N.Y. Nov. 5, 1998), citing Robinson v. Viacom, Id.

3) “shared trait, by itself, is insufficient to establish substantial similarity between the characters.” Hogan v. DC Comics, 48 F. Supp. 2d 298 (S.D.N.Y. 1999) comparing “the main characters in Matchsticks and Dhampire [in] that they share the same name: Nicholas Gaunt”

4) Willis v. HBO, 2001 U.S. Dist. LEXIS 17887, 60 U.S.P.Q.2d (BNA) 1916 (S.D.N.Y. Nov. 5, 2001) comparing characters in Arli$$ and Schmoozers:

‘The essence of infringement lies in taking not a general theme, but its particular expression through similarities of treatment, details, scenes, events and characterization.’ Reyher, 533 F.2d at 91. ‘The law will not grant an author a monopoly over the unparticularized expression of an idea at such a level of abstraction or generality as unduly to inhibit independent creation by others.’ Gund, Inc. v. Smile Int’l, Inc., 691 F. Supp. 642, 644 (S.D.N.Y. 1988), aff’d mem., 872 F.2d 1021 (2d Cir. 1989). Consistent with these principles, copyright law does not protect stock characters, incidents or settings that are as a practical matter indispensable or standard in the treatment of a given topic. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 449 U.S. 841, 66 L. Ed. 2d 49, 101 S. Ct. 121 (1980).

5) “concepts and ideas may not be copyrighted and that only a particular expression of an idea may be copyrighted.” CBS Survivor v. ABC Granada, 2003 U.S. Dist. LEXIS 20258 (S.D.N.Y. Jan. 13, 2003) comparing Big Brother and Survivor to “I’m a Celebrity get me out of here” in regards to elements like island survival and “serial elimination”. The court finds for Celebrity and thus is born an era of vote-off reality TV shows in the style of Big Brother and Survivor – a style not protectable by copyright. NBC and Donald Trump’s “The Apprentice” premiered the following year.

6) And most recently cited regarding children’s book characters in Lewinson v. Henry Holt & Co., LLC, 659 F. Supp. 2d 547 S.D.N.Y. 2009) “[C]opyright law does not protect stock characters . . . standard in the treatment of a given topic.” “[T]he broad theme of a diverse group of children sharing adventures and experiences is by itself unprotectable under the copyright laws.”

NinjaLaw has already posted about three prior mentions of the Teenage Mutant Ninja Turtles in Federal Court opinions but it was in 1994 that for the first time, a Federal Court opinion was actually involving them as intellectual property in dispute.

MIRAGE STUDIOS, a Massachusetts general partnership, Plaintiff, v. WENG C. YONG, MERRY M. YONG, DENNIS C.M. LOW and DOES 1-5 inclusive, dba TAI FUNG TRADING; et al., Defendants.
No. C-93-2684-VRW
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA
1994 U.S. Dist. LEXIS 5618

The opinion is by Judge Vaughn R. Walker. You may recall he is also the judge who recently ruled that California’a Proposition 22 was unconstitutional in case Perry v. Schwarzenegger about gay marriage case.

Written April 29, 1994:

On July 15, 1993, Mirage Studios (“Mirage”) filed this action for copyright and trademark infringement against a group of thirty-four retailers, distributors and manufacturers, alleging that each of the named defendants has infringed and threatens to further infringe upon Mirage’s copyrighted and trademarked “Teenage Mutant Ninja Turtles.”

I presume this was mostly for infringing tee-shirts. And as is typical, the copyright holder asked for maximum damages, in this case $10,000 but Judge Walker found no evidence of any such actual damages and ordered only $500 per defendant (34×500 is $17,000). Also the Judge ordered attorney’s fees of “$780 in attorney fees and $40 in service costs per defendant” – that $780 is the attorney’s bill of “5.2 hours (at $150 per hour)”.

The Court also chides the defendants who did not answer the complaints suggesting that they could have more easily settled the case in advance, but I wonder because attorney fees to answer could only have increased costs.

So this is the first time TMNT is actually directly involved in a Federal Court opinion. But recall the previous NinjaLaw posts about the prior tangential mentions the characters:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

Don’t worry, there’s more to come too.

In 1992, El Cajon Cinemas sued AMC (American Multi-Cinema) alleging unfair trade practices preventing it from competing in the first-run movie business. “El Cajon alleges that it was injured by several different forms of defendants’ anticompetitive conduct.” Including: “Horizontal conspiracy, Circuit-Wide Deals, Leverages, Clearances and other Discriminatory allocations”

EL CAJON CINEMAS, INC., a California corporation, Plaintiff, v. AMERICAN MULTI-CINEMA, INC.
No. 90 0710 IEG (POR), 90 1408 IEG (POR), 92 0012 IEG (POR) (Consolidated)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA
1992 U.S. Dist. LEXIS 19290; 1992-2 Trade Cas. (CCH) P70,038
Decided – October 23, 1992

Explaining the allegations of Circuit-Wide Deals, Judge Gonzales writes:

El Cajon alleges that AMC and Pacific abused the buying power of their large circuits by persuading distributors to license to their theatres nationally rather than on a film by film or theatre by theatre basis in each geographic market. El Cajon cites the Court to the deposition of its film buyer who states that all of the films by all distributors are really licensed in this manner. El Cajon also references another section in its film buyer’s deposition in which the film buyer says that, although he is not sure, he thinks that NINJA TURTLES and WILD AT HEART were distributed on a circuit-wide basis. This alone is not enough to withstand a motion for summary judgment. At the request of El Cajon, the Court will review other evidence submitted by El Cajon relating to alleged circuit-wide deals between Pacific and Orion, and will take this matter under advisement.


Wild at Heart was a 1990 movie by director David Lynch starring Nicolas Cage, Laura Dern and Willem Dafoe. The original Teenage Mutant Ninja Turtle movie was also a 1990 release.

But the Court refused El Cajon’s arguments:

While the Unfair Practices Act makes it unlawful for any person engaged in the production, manufacture, distribution or sale of any article or product for general use or consumption to perform certain acts which the state has determined are anticompetitive, Section 17024 of the Unfair Practices Act provides that the motion picture films when licensed for exhibition to motion picture houses are not articles or products under this chapter. As a matter of law, none of the defendants can be held in violation of the Unfair Practices Act for engaging in the alleged conduct.

El Cajon failed again on a motion for reconsideration decided in 1993. And right now on the internet (google), I can’t find any “El Cajon Cinemas” chain in existence.

Finally, note a recent article, Jan 3, 2012, posted in the Atlantic by Derek Thompson, entitled “Why Do All Movie Tickets Cost the Same?” about movie price fixing. It’s not exactly the same issue as El Cajon faced (Thompson is referring to each movie having the same admit cost, whereas El Cajon was fighting being forced to buy who sets of the distributor’s movies in order to get access to the hot new movies), but it’s all related to the big business takeover of independent cinema in the early 1990’s.

Ninja again being coincidentally(?) being a character of big business racketeering style takeovers. It is humorous to see the ninja turles involvement in this early media war and again recall their involvement in the cola wars.

In the 1992 trademark case of Monarch v Ritam, the Federal Court decided the usage of the word “ooze” or “ooz” in the marketing of a novelty toy product goo. The Court decides that ooze is either generic or descriptive and does not qualify for Lanham Act protections. And for the second time, a federal court cites Teenage Mutant Ninja Turtles even though its not really involved in the case.

MONARCH LICENSING, LTD., Plaintiff, -against- RITAM INTERNATIONAL LTD., INC., and BRAVMAN ASSOCIATES, INC., Defendants.
92 Civ. 3108(PNL)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
1992 U.S. Dist. LEXIS 8225; 24 U.S.P.Q.2D (BNA) 1456
June 12, 1992, Decided

The Court explains:

Ooz Ball is either a generic unprotectible mark or a descriptive mark which is unprotectible without secondary meaning.

Ordinarily, distinctiveness is a prerequisite to the establishment of trademark rights. Marks that are generic are never protectible. Marks that are descriptive rather than distinctive are protectible only on a showing of “secondary meaning.” See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 – 11 (2d Cir. 1976); Restatement (Third) of Unfair Competition §§ 13, 15 (Tent. Draft No. 2 1989) [hereinafter Restatement]

Monarch’s asserted trademark rights attach to the mark “Ooz Ball.” This mark results from the combination of two words: “Ooze” (with the final silent “e” dropped) and “ball.” This mark is used to designate an object which is denoted, or at least described, by those words. The object is delivered in the form of a ball and is intended to be used (at least partially) as a ball (by bouncing it and throwing it). The material of which the ball is composed can properly be called ooze. “Ooze” is a word from Old English which in ancient times referred to the muddy silt characteristically found in the beds of rivers or other bodies of water. From the Old English noun developed the same word as a verb, denoting the action characteristic of such muddy silt; the verb has in [*16] turn influenced the meaning of the noun which has come to include “that which oozes.” See I Compact Edition of the Oxford English Dictionary 1993 (1971). Thus a thick viscous liquid that flows slowly (or oozes) is Ooze.

A strong argument may be made that when this mark is used for this product, it is generic and therefore unprotectible, see Abercrombie & Fitch, 537 F.2d at 9; Restatement § 15; “Ooz Ball” is used in connection with a product that is a ball of ooze, or an ooze ball. As to the dropping of the silent “e,” such HN4Go to this Headnote in the case.spelling changes that do not affect pronunciation ordinarily will not save a generic mark. See, e.g., Leon Finker, Inc. v. Schlussel, 469 F. Supp. 674, 678 (S.D.N.Y.), aff’d, 614 F.2d 1288 (2d Cir. 1979); Restatement, § 14, Comment (a) and § 15, Comment (a); see generally 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:12 at 555 – 556 (2d Ed. 1984).

The argument that the mark is generic is strongly supported by the text on the Ooz Ball packaging which, immediately under the trademark Ooz Ball, adds a descriptive line describing the product as a pod of “Intergalactic Ooze.” Also, the instructions on the package advise that if the product dries up, drops of water may be added to restore its “ooz-ability.” The inference is further reinforced by the fact that two other manufacturers of similar products, in addition to Ritam, have used the word ooze as part of the mark and/or description of their product: Dinosaur Ooze and Teenage Mutant Ninja Turtles Retromutagen Ooze.

At the very best, this mark sits at the low end of the “descriptive” category. As a descriptive mark, it is not entitled to protection without having achieved secondary meaning in the marketplace. See Abercrombie & Fitch, 537 F.2d at 10.

Monarch has made a very skimpy, conclusory and inadequate showing of secondary meaning. If the mark escapes the generic unprotectible category and is properly considered descriptive, it is, nonetheless, in all probability unprotectible because of inadequate proof of secondary meaning.

Recall that TMNT was cited before in a NinjaLaw case about soda and the cola wars because they made a “cowabunga cooler” product. While this “ooze” case is a more unusual product, it seems there were a lot of these oozes (and Ghostbusters slime) on the market and I think perhaps judges and law clerks like the “ninja turtles” and love the opportunity to mention it as we will see in many future cases as we continue to into NinjaLaw.

Teenage Mutant Ninja Turtles will appear in at least ten Federal Court opinions. The first is in 1991, in a seemingly irrelevant mention of the TMNT Cowabunga Cooler in a case about soft drink bottlers. Sun Dun sued Coca-Cola and PepsiCo alleging violations of antitrust laws.

sun dun vending

SUN DUN, INC. OF WASHINGTON, Plaintiff, v. THE COCA-COLA COMPANY, et al., Defendants
Civil No. S 88-2540
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND
770 F. Supp. 285

Decided – August 15, 1991

In discussing summary judgment based on The Soft Drink Interbrand Competition Act, the Court says:

In addition to the fierce competition between the Coke and Pepsi brands, which cannot be gainsaid on this or any other terrestrial record (cf. the 1961 Billy Wilder movie “One, Two, Three”), there is overwhelming evidence that the Washington Metropolitan area is awash with hundreds of effectively competing soft drinks, fruit juices, and other liquid concoctions. Indeed, the range of brands competing for the soft drink buyer’s quarters boggles the lay mind, which seldom focuses on the array of such products; it includes (as so aptly put in PepsiCo’s supporting memorandum) everything from Pennsylvania Dutch Birch Beer to Teenage Mutant Ninja Turtle Cowabunga Cooler.

Recall this is the height of the cola wars.